CHAPTER 1. GENERAL
1.1 FLOW CHART ········································································································· 1
1.2 EXAMINATION PROCEDURE IN GENERAL············································································· 2
2.1 QUALIFICATIONS ····································································································· 4
2.2 DUTIES ··············································································································· 4
2.3 DESIGNATION AND CHANGE OF EXAMINER·········································································· 4
2.4 INTERNAL REPORTING ······························································································· 5
2.5 FORM AND NAME OF AUTHORITY FOR EXAMINATION-RELATED DOCUMENTS ······································ 6
3.1 FLOWCHART OF THE IPC ASSIGNMENT ············································································· 7
3.2 GENERAL PRINCIPLES OF THE IPC ASSIGNMENT···································································· 7
3.3 GENERAL RULE OF THE IPC ASSIGNMENT ·········································································· 8
3.4 IPC ASSIGNMENT BY TECHNICAL SUBJECTS ········································································ 9
3.5 CONFIRMATION OF THE IPC························································································11
4.1 PURPOSE ············································································································12
4.2 DATE ················································································································12
4.3 CONTENT ············································································································12
4.4 FORM OF BEING LAID OPEN ························································································13
4.5 EFFECTS ·············································································································13
5.1 GENERAL ············································································································13
5.2 PROCEDURE ·········································································································14
5.3 EFFECTS ·············································································································14
6.1 EXAMINATION ORDER·······························································································14
6.2 EXAMINATION TO BE DEFERRED ····················································································15
8. GENERAL PRINCIPLES FOR LAW APPLICATION···················································· 18
CHAPTER 2. SEARCH FOR PRIOR ART
1. OVERVIEW OF SEARCH FOR PRIOR ART······························································ 19
2. PROCEDURE PRIOR TO SEARCH FOR PRIOR ART ················································· 19
3. SEARCH PROCEDURE ······················································································· 19
3.1 SEARCH SCOPE······································································································19
3.2 CONDITIONS UNDER WHICH SEARCH IS NOT REQUIRED OR IS LIMITED ··········································19
3.3 TIME COVERAGE OF SEARCH ·······················································································20
3.4 SUSPENSION OF SEARCH····························································································20 3.5 GENERAL PRINCIPLE OF SEARCH ···················································································21
3.6 CITATION OF PRIOR ART DOCUMENTS ·············································································21
3.6 OTHERS ·············································································································22
4. MEASURES AFTER SEARCHING ·········································································· 23
5.1 SEARCH REQUEST···································································································23
5.2 DELIVERY AND REVIEW OF PRIOR ART SEARCH OUTCOME························································23
CHAPTER 3. EXAMINATION PROCESS
1. OVERVIEW······································································································ 25
2. UNDERSTANDING OF INVENTION ······································································ 25
3. REVIEW OF PRIOR ART DOCUMENTS·································································· 26
4. SPECIAL APPLICATION····················································································· 26
4.1 PRIORITY CLAIM UNDER TREATY ···················································································26
4.2 DOMESTIC PRIORITY CLAIM ························································································28
4.3 NON-PREJUDICIAL DISCLOSURES···················································································30
4.4 DIVISIONAL OR CONVERTED APPLICATION·········································································31
4.5 APPLICATION BY A PERSON ENTITLED TO THE GRANT OF A PATENT ··············································32
4.6 INTERNATIONAL PATENT APPLICATION ·············································································33
5.1 INSTRUCTIONS FOR NOTICE OF GROUND FOR REJECTION ························································35
5.3 TYPES OF NOTICE OF GROUND FOR REJECTION ···································································38
5.3.2 「Final Notice of Grounds for Rejection」 ······························································39
5.3.3 Selection of Notice of Grounds for Rejection (Final or Non-final) ································40
5.4 EXAMINATION ON A CLAIM-BY-CLAIM BASIS ·······································································40
5.4.2 Instructions for Written Notice of Ground for Rejection ············································40
5.4.3 Preparation of Written Decision of Rejection ·························································43
5.4.4 Instructions for Examination on Claim-to-claim Basis···············································44
5.5 DISCLOSURE OF INFORMATION ON PRIOR ART DOCUMENTS ······················································45
5.5.2 Citation of Non-patent Documents ·····································································46
5.5.3 Citation of Electronic Documents ·······································································47
6. INSTRUCTIONS FOR WRITTEN ARGUMENT AND OTHERS ······································ 48
6.1 EXTENSION OR REDUCTION OF DESIGNATED PERIOD ·····························································48
6.1.2 Extension and Approval of Period Designated for Formality Examination ······················49
6.1.3 Reduction of Designated Period and Others ··························································50
6.2 INSTRUCTIONS FOR WRITTEN ARGUMENT ·········································································50
6.3 TREATMENT OF AMENDMENTS ······················································································50
6.3.2 Additional Matters to be considered ····································································51
6.4 INSTRUCTIONS FOR REFERENCE DOCUMENT IN EXAMINATION····················································53
8. EXAMINATION DEFERRAL OR EXTENSION OF PROCESSING PERIOD······················· 55
9. DOCUMENT DELIVERY ······················································································ 56
9.1 GENERAL PRINCIPLES ·······························································································56
9.2 DELIVERY BY PUBLIC NOTIFICATION ···············································································56
10. PERSONAL INTERVIEW··················································································· 57
10.1 REQUEST AND GRANT FOR PERSONAL INTERVIEW ·······························································57
10.2 PROCEDURE OF PERSONAL INTERVIEW ···········································································58
10.3. INSTRUCTIONS OF PERSONAL INTERVIEW ·······································································58
10.4. PERSONAL INTERVIEW ON VISIT ·················································································59
11.2 EXAMINATION OF AMENDMENT ···················································································60
11.3 EXAMINATION AFTER ADMISSION OF AMENDMENT ·······························································63
11.4 EXAMINATION AFTER AMENDMENT DISMISSAL ···································································63
12.1 DECISION TO GRANT A PATENT···················································································64
12.2 DECISION TO REJECT AN APPLICATION ···········································································64
12.3 ADDITIONAL NOTES ·······························································································65
CHAPTER 4. REEXAMINATION
1. OVERVIEW······································································································ 67
2.1 REEXAMINATION PROCEDURE FLOW CHART ·······································································67
2.2 EXAMINATION OF FORMALITIES IN REEXAMINATION REQUEST ····················································68
2.3 REVIEW OF AMENDMENT APPROPRIATENESS·······································································69
2.4 EXAMINATION AFTER ADMISSION OF AMENDMENT ································································70
2.5 EXAMINATION AFTER DISMISSAL OF AMENDMENT ·································································71
CHAPTER 5. AMENDMENT EX OFFICIO
1. OVERVIEW······································································································ 72
2. MATTERS TO BE AMENDED EX OFFICIO ······························································ 72
4. PROCEDURE OF AMENDMENT EX OFFICIO··························································· 74
1.1 Flow Chart
This part briefly sets out the general procedure for examination as referred to the aforementioned flow chart 1.1. Detailed explanation on each stage will be dealt with in the following Part 2~ Part 6.
(1) Examination of Formal Requirements
The examination of formal requirements is a process to check as to whether an application meets the formal requirements. The followings relates to the requirements: capacity, representation, physical requirements of the application, filing and fees, matters according to each subparagraph of the Article 11 (1) of the Enforcement Rules of the Patent Act.
A preliminary check is in principle carried out in the name of the Commissioner of KIPO by the receiving office where application documents are initially filed. When the receiving office fails to conduct the examination of formal requirements, an examiner can carry out further checks in the name of the Commissioner of KIPO.
Where an examiner considers the amendment made at the reexamination stage, and still finds the stated grounds for rejection not overcome, the examiner shall decide to reject the patent application.
The Commissioner of KIPO shall designate a qualified examiner to examine patent applications.
A person eligible to become a patent examiner shall be the following public officials in KIPO or its affiliated agencies who have completed the prescribed education and training course for a trial examiner conducted by International Intellectual Property Training Institute (IIPTI); A public official of Grade V or higher in general service, a public official in general service who belongs to the Senior Civil Service, or a specialized contract-based public official.
an accelerated examination is not an applicant)
dismiss an amendment, an invalidation measure, or decision to extend or reject an application to register an extension of the term of a patent right.
(Note) Grade of examiner is decided in accordance with experience in patent examination, assessment of examination performance, completion of required training program for each level. The decision is made by the advancement deliberation committee in KIPO. Qualifications for a chief examiner requires more than 10 years of examination experience, more than 7 years for a senior examiner and more than 4 years for a junior examiner, together with completion training courses. (Article 5-7 of Instruction on Operation of Patent Examiner Grade System)
The IPC assignment has to be made in an accurate manner based on the scope of the invention of each application since it is necessary as an effective search tool for the retrieval of patent documents by intellectual property offices and other users.
3.1 Flowchart of the IPC Assignment
(Ex1) In case of electronic radio circuit comprising a tuner, a demodulator, an amplifier, and an output circuit, these four parts of the circuit are not individually classified. Rather, the classification is determined based on the whole electronic radio circuit comprising the abovementioned four parts. Yet, if the core technical subject-matter of the claimed invention concerns one specific part of the circuit, such part can serves as a basis for the classification.
3 extension level classification symbols describing invention information:
C04B 32/00, B28B 5/00, B28B 1/29 1 extension level classification symbol describing additional information: H05B 3/18 1 indexing code describing additional information: C04B 111/10
(3) It is discretionary to grant additional information for the already classified invention. The additional information can be given by either indexing code or classification symbols.
With regard to classification confirmation, the classification symbol for invention information and additional information can be I (first letter of Invention) and N (first letter of Non-invention), respectively. Yet, the main classification shall always have attributes of invention information while the indexing code has those of additional information.
For the purpose of treating the technical matter not in claims but included in detailed description or drawing(s) as preferable research, the invention can be given a classification symbol for the additional information. The method of granting a classification symbol for technical subject-matter applies mutatis mutandis.
With regard to chemical compounds in Markush Type which is generally defined in a chemical formula, the general chemical formula of the compound shall be classified in the place individually if the formula has a few relevant places (for example, less than 5).
If specified compounds are things per se in the claimed invention(particularly composition), output produced from the process of claims, or their derivatives, the compounds shall be classified in each relevant place of the above mentioned. 'Specified' in this text refers to ① 'designated' of the structure of compounds by title or formula or 'inferred' from the manufacturing method of a specific reactant among selective reactants, or ② 'identified' with physical properties (for example, melting point) in the description or 'described' as an implement example where the manufacturing method is depicted in detail.
They are classified as useful information for the purpose of other searches.
(10) Classification of Compounds in Combinatorial Libraries
With regard to combinatorial libraries where a large number of different compounds or bioactive substances are involved, each individual compound shall be classified pursuant to the same method as the classification of compound in Markush type. Provided however, the characteristics of the entire library shall be classified into the combinatorial chemistry (C40B).
(1) When the pre-classification is assigned by an outsourcing agency and transferred to the examiner in charge, the examiner shall check as to the pre-classification has been appropriately made based on the technical subject-matter of the claim with referring to the detailed description and drawings (if necessary). If an application has been found to be incorrectly pre-classified by the agency, the examiner may reclassify the classification with appropriate classification places.
The IPC classification has a hierarchical structure consisting of IPC section → subsection → class
→ subclass → main group → subgroup. In consideration of the hierarchical structure, the classification shall be determined following hierarchical path from high to low level.
4.1 Purpose
The scheme for laying open of application was introduced along with the system for examination request. The laying open of application, regardless of examination performance, is designed to prevent overlaps in investment and research by publication of the application after the prescribed period elapsed from the filing date.
In the past when the laying open of application was not introduced, the application was not laid open until its registration. Therefore, if the examination on the application was delayed, so did its publication. This results in not only devaluation of the invention as a technical information but also failure to use the invention as common knowledge for social contribution in industrial development. In this regard, the examination on the application and its publication are separated and the system for laying open is introduced after the prescribed period elapsed from the filing date.
(1) In principle, all patent applications shall be laid open after the expiry of the period of one year and six months from the date falling under any subparagraphs in the Article 64 (1) of the Patent Act or before that date if requested by applicants. The matters to be laid open are enumerated in the Article 19 (3) of the Enforcement Decree of the Patent Act, provided however that the following application, which is in general to be laid open, shall be excluded; an application which omits the statement of scope of claims as prescribed in the Article 42 (5) of the Patent Act, an application whose registration is published, or an application which is invalidated, withdrawn, abandoned, or decided to reject.
(EX) With regard to the original application as a basis of domestic priority claim, it shall be laid open when an application requests its early publication before it is regarded to be withdrawn (i.e., within one year and three months from the filing date of the original application) or the due date for publication arrives (for example, the original application where the priority under the treaty is claimed at the same time).
(2) The patent application shall not be disclosed in patent gazette if it contains matters which require confidentiality due to national security, or is liable to contravene public order or morality or to injure public health. (the Patent Act Article 64, the Enforcement Decree of the Patent Act Article 19 (3))
The application is laid open in online patent gazette on KIPO website. The same publication can be found in DVD-ROM and via KIPI website.
5.1 General
For a divisional application or a converted application, a person may request an examination within thirty days from the filing date of the divisional application or the converted application, even after the expiry of the aforementioned 5-year period.
(Note) The request for examination of an international patent application shall be made within 5 years from the international filing date, not from the submission date of its translation to Korea pursuant to the Article 11 (3) of the PCT and the Article 199 of the Patent Act (Case No. 95 Nuh 3336 (Supreme Court, 16. June. 1998)).
(4) Where a request for examination has not been made within the prescribed period, the patent application concerned is deemed to have been withdrawn.
(1) A person filing the request for examination shall submit a written request (Form (xxii) in the Enforcement Rules of the Patent Act) to the Commissioner of KIPO and pay the examination fee (the Patent Act Article 60 (1)).
(Note) Where the number of claims increases because of amendments to the specification after the request for examination made by a person other than the applicant, the applicant shall pay the fee for the request for examination corresponding to the increased number of claims. Where the examination fees for the increased claims are not paid, the applicant is asked for the amendment. If the applicant fails to make additional payment as requested, the amendment procedure in the pertinent specification can be invalidated.
6.1 Examination Order
An examiner shall verify whether the application received in order is appropriately allocated to him/herself in terms of the IPC, the validity of his/her function in examination, etc. To prevent an examination delay, the verification procedure shall be concluded as quickly as possible.
In case when the parent application is divided or converted after the examination started, the examination shall start before the later date of either 3 months from the examination request for the divisional or converted application or 2 months from the receipt of application documents. Yet, in the case of a parent application on request for an accelerated examination, its divisional or converted application does not follow the aforementioned order but the order of the parent application.
| Applicant | Earlier Application | Examination of Later Application |
|---|---|---|
| Laid off | Notify grounds for rejection pursuant to the Article 36 (1) after examination (Decide grant or rejection of a patent after confirming the scope of a claim of the earlier application) | |
| Identical | Not Laid off | Notify grounds for rejection pursuant to the Article 36 (1) after examination (Identify the application number of the earlier application and the claimed invention stated in the scope of claims, and decide a grant or rejection of a patent after confirming the scope of a claim of the earlier application) |
| Different | Laid off | Notify grounds for rejection pursuant to the Article 29 (3),(4) after examination (Apply the Article 36 (1) for identical inventor) |
| Not Laid off | Defer examination till the earlier application is laid off |
(Abbreviation: Month/M, Week/W, Day/D)
| Type | Initial Date | Time | Reference | Others | |
|---|---|---|---|---|---|
| IPC Classification | Definitive Classification | Receipt Date of Application Preclassification | 1 M | Instruction Article 10(2)(i) | Regular |
| 2 Ws | Instruction Article 10(2)(ii) | Priority | |||
| 2 Ds | Instruction Article 10(2)(iii) | High-Speed Application | |||
| Regular Examination | Examination Start | Examination Request Date | Request Order | Enforcement Rule Article 38 Instruction Article 20 | |
| Interim Documents | Expiration Date of Designated Period/ Receipt Date of Interim Documents | 4 Ms | None | Late Expiration Date | |
| Accelerated Examination | Decision for Accelerated Application | Receipt Date of Notice of Accelerated Application Request | 7 Ds | Instruction Article 59(1) | |
| Expiration Date of Amendment Period/ Receipt Date of Amendment Documents | 7Ds | Instruction Article 59(3) | Late Expiration Date | ||
| Prior Art Search Request | Delivery Date of Patent Decision Notice | 15Ds | Instruction Article 86(1) | ||
| Examination Start | Delivery Date of Patent Decision Notice | 2Ms | Instruction Article 66(1) | Late Expiration Date | |
| Receipt Date of Prior Art Search Outcome | 1M | ||||
| Receipt Date of Written Amendment | 1M | Instruction Article 66(2) | |||
| Interim Documents | Expiration Date of Designated Period/ Receipt Date of Interim Documents | 2Ms | Instruction Article 66(2) | Late Expiration Date | |
| Super Accelerated | Decision for High-speed | Receipt Date of Notice of | 2Ds | Instruction | |
| Examination | Examination | Accelerated Request | Article 59(4) | ||
|---|---|---|---|---|---|
| Expiration Date of Amendment Period/ Receipt Date of Amendment Documents | 2Ds | Instruction Article 59(4) | Late Expiration Date | ||
| Examination Start | Delivery Date of Notice of Accelerated Examination Decision | 14Ds | Instruction Article 66(5) | ||
| Interim Documents | Expiration Date of Amendment Period/ Receipt Date of Amendment Documents | 1M | Instruction Article 66(6) | Late Expiration Date | |
| Examination Deferred | Examination Start | Examination Deferral Date/ Application Receipt Date | 3Ms | Instruction Article 21bis | Late Expiration Date |
| Divisional/ Converted Application | Examination Start | Examination Request Date | 3Ms | Instruction Article 21(1) | Late Expiration Date |
| Documents Receipt Date | 2Ms | ||||
| Request for Reexamination after Cancellation | Examination Resume | Documents Receipt Date | 1Ms | Instruction Article 55(1) | |
| Extended Designation Period | Decision for Approval | Receipt Date of Term Extension Request after Expiration | 2Ws | Instruction Article 23bis | Approval of Automatic Extension after Expiration |
For example, when an applicant filed an application, claiming a priority in Korea after October 1, 2006 on a basis of the original application filed in Japan before September 30, 2006, the internationalism, which inventions publicly known or worked can be used as prior art (amended to be included in the Article 29 (1) (i) of the Patent Act by Act No. 7871 on March 3, 2006), can be applied to this application. The examiner may notify the applicant by the grounds that it is publicly worked in Japan before the filing date in Japan.
Chapter 2. Search for Prior Art
1. Overview of Search for Prior Art
The search for prior art is performed during the examination stage with the objective of discovering the relevant state of the art to assess the patentability of the invention such as novelty and inventive step. The search for prior art includes the search for earlier applications prescribed in the Article 36 and the Article 29 (3) of the same Act.
If considered necessary for examination, an examiner may outsource the search for prior art to the specialized organization pursuant to Article 58(1).
2. Procedure Prior To Search for Prior Art
3. Search Procedure
3.1 Search Scope
3.2 Conditions under which Search is not Required or is Limited
No special search effort needs to be made for searching or search may be carried out within the necessary scope if the claimed invention falls under any of the following cases. The examiner shall notify the applicant of the fact that the application concerned does not comply with the provision of Patent Act to such an extent that a meaningful search is impossible for some or all of the claims.
④ Where the claims of the application do not relate to one invention only, nor to a group of inventions linked so as to form a single general inventive concept under the Article 45
In such case, the examiner may first notify the grounds for rejection based on the lack of unity of invention and wait for the applicant's response.
⑤ Where the examiner is unable to interpret the claims due their lack of clarity and conciseness
However, if the examiner can understand the invention despite any deficiencies in the statement, the examiner shall proceed with the search and assessment of patentability within the scope of the defined invention.
3.3 Time Coverage of Search
However, when there is no trouble to decide the reference date in each claim, the examiner may decide the priority date in each claim and then conduct the search for prior art by each claim.
3.4 Suspension of Search
most thorough search for prior art within available time and cost. In this case, even if the examiner with the rational judgment fails to discover effective prior arts for search, he/she may suspend the search.
3.5 General Principle of Search
When the application contains only claims of one category, it may be desirable to include other categories in the search.
(Ex1) An examiner can assess novelty and inventive step with regard to final products by carrying out the search, even though invention relates to a method of chemical process.
(Ex2) In case of the process invention for manufacturing article or in case of determining whether the producing process can be easily solved after the prior art search is conducted on the claimed invention.
(4) The search for prior art shall be made on a basis of the claimed invention. Nevertheless, if no additional excessive efforts are required, the examiner may conduct the search for prior art on the based on the invention stated in the description but not included in the scope of the claim, with preparing for the amendment.
3.6 Citation of Prior Art Documents
3.6 Others
Reference can be made to search reports regarding international applications under PCT or patent applications in European Patent System. The related prior art in search reports can be classified as follows depending on its relevance.
The examiner review delivery method of search outcome, appropriateness of searched documents, accuracy of the relevancy between searched documents and the claimed invention, balanced composition among search documents, and other issues related to the prior art search service.
1 Article 58: If considered necessary for examination of a patent application (including an international search or international preliminary examination), the Commissioner of KIPO may designate a specialized organization and request it to search for prior art, make an international patent classification, and conduct other tasks prescribed by Presidential Decree.
(Note) The search outcome produced by the external organization shall be supplied with the format designated by KIPO.「Search Report on Prior Art」compares the technical subject-matter of each claim with its cited documents and has the number of page and line of cited documents additionally. Also, the cited documents attached to the「Search Report on Prior Art」 shows the technical subject matter in pertinent method comparing with the technical subject-matter of each claim of the
application.
(2) As a part of preliminary review, the examiner reviews the whole contents of「Search Report on Prior Art」according to the list in「Delivery Statement of Prior Art Search Outcome 」and states the review outcomes in「Review Statement of Prior Art Search Outcome」. The examiner reports the
review outcomes to a director of the relevant Examination Bureau following a head of the Examination Division (Team).
The director of the Examination Bureau also reports the review outcomes to both the General Services Division and the specialized search organization having conducted search service with the attachment of the「Review Statement of Prior Art Search Outcome」 and notifies the current state of the reviews to the Patent Examination Support Division.
(3) As a part of confirmation review, the examiner, in the course of substantive examination, prepares analysis report illustrating the utility of the search outcomes (produced from the external search service) in accordance with its practical use on the Patent Examination Processing System.
(Note) The service contract for search for prior art contains the provision of reexamination obliged to the service organization in the case when the examiner evaluates the outcomes as unutilized.
Chapter 3. Examination Process
3. Review of Prior Art Documents
The examiner shall determine as to whether the prior art retrieved can provide grounds for rejection regarding novelty, inventive step, enlarged concept of novelty or earlier application.
(1) Since the publication date of the prior art document is critical to access patentability such as novelty or inventive step, the examiner shall review the bibliography to find out whether the publication date precedes the filing date (or the priority date if the priority claim is concerned).
With respect to the enlarged concept of novelty, the examiner shall check not only applicants but also inventors of the application of patent (or utility model registration application).
"Novelty" in Chapter II of Part 2 includes the detailed information about the publication date for prior art.
(2) The examiner shall have clear understanding about technical issues disclosed in the relevant prior art documents. It is of worth to note that the examiner shall be careful not to acknowledge matters, which are not disclosed in those documents with the knowledge having acquired from the application of the claimed invention. Also, the examiner shall be cautious not to presumably over-interpret claims without logical grounds.
4. Special Application
4.1 Priority Claim under Treaty
For the priority claim based on the 2 or more original applications in the country where the application is initially filed, when the invention of the priority claim is a combination of technical subject-matters separately stated in 2 or more original applications in the country where the application is initially filed, or when the invention of the priority claim is a combination of new technical subject-matter and those separately stated in 2 or more original applications in the country where the application is initially filed, the invention of the priority claim shall be treated as
an「invention which is not stated in the original application in the country where the application is
initially filed」.
③ When the original application in the country where the application is initially filed (the application that forms a basis of the priority claim under the treaty) claims the priority right based on
another application having filed beforehand, the original application shall not be regarded as the「earliest application」defined by the Article 4 C (2) of the Paris Convention for the Protection of Industrial Property, concerning the invention described in both the original application and the
another application. In this regard, the effect of the priority claim shall not be recognized. Therefore, the examination in this case shall not be conducted retroactively to the reference date and the examiner shall notify specific reason for non-retroactive application.
When the examiner during the search for prior art discovers the prior art for the invention that is not possible to apply the reference date in requirements for patent registration retroactively to the period between the earliest date and the filing date of the priority claim, the examiner shall specify the reason for non-retroactive application in the notice of grounds for rejection.
(5) Evidential documents for the priority claim shall be submitted within one year and four months from the earliest filing date. Where the priority right claimant fails to submit the evidential documents within the prescribed statutory period, the priority claim loses its effect.
Where the examiner during his/her review of examination records, discovers that evidential documents for the priority are not submitted, he/she requests a procedural amendment to the priority claim and invalidates the procedure afterward if the procedural deficiency is not amended. It is worthy to note that the submission of the evidential documents after the statutory period cannot cure the procedural deficiency.
In the meanwhile, officers in charge shall be aware that the submission of a copy of description or drawing(s) of the invention in the original application can be exempt, if application is filed in countries that are equipped with the on-line system for exchange of evidential documents between administrative patent agencies and agree for on-line delivery of those evidential documents through an electronic access system (Direct-attached Storage, DAS) in Japan, European Patent Organization, US, and WIPO.
Also, officers in charge shall be aware that the application number in the priority claim application may substitute for the submission of documents stating the application number of the original application in the country where the application is initially filed in accordance with the Article 54 (4) (ii) of the Patent Act.
(6) If considered necessary, for example, there exists prior art during the period between the earliest date and the filing date of the application with the priority claim under the treaty, the examiner may set a time period and request the submission of translations of evidential documents for priority claim. In the case when the claimant fails to submit the translations in Korean within the prescribed period, the examiner may invalidate the priority claim procedure.
4.2 Domestic Priority Claim
For the domestic priority claim based on 2 or more earlier applications, when the invention of the priority claim is a combination of technical subject-matter separately stated in 2 or more first specification of earlier applications, or when the invention of the priority claim is a combination of new technical subject-matter and those separately stated in 2 or more first specification of earlier
applications, the invention of the priority claim shall be treated as an「invention which is not stated
in the first specification of earlier application」.
When the examiner discovers that the application under his examination is based on the domestic priority claim, he/she shall defer further examination.
In the meanwhile, where the domestic priority claim is invalidated due to deficiency in formalities, the examiner shall resume his examination on the application suspended and considered withdrawn. In this case, another application in the Article 29 (3) of the Patent Act or the earlier application in the article 36 may arise as problems between the earlier application and the application with domestic priority claim.
(8) The decision to grant a patent on the domestic priority claim shall be deferred till the earlier application is considered withdrawn. When the examiner carries out the preferential examination on the application with the domestic priority claim, he/she shall notify the applicant that the decision to grant a patent shall be deferred till the earlier application is withdrawn.
4.3 Non-prejudicial Disclosures
For example, when the exhibition displays an invention and sells it to the market separately, the exemption claim for public disclosure shall be made to both exhibition displays and market sales with evidential documents respectively. However, if the market sales are closely connected with the exhibition pursuant to the exhibition contract, the submission of the documents for market sales in this case can be exempt.
(Note) Under the First-to-File rule, the public disclosure requirement is exceptionally exempt, which is designed to protect a patent by recognizing novelty when a certain procedural requirements are satisfied and to further promote industrial development. Also, this protects the public confidence and guarantees the foreseeability.
4.4 Divisional or Converted Application
In the meanwhile, a divisional application shall not be filed after request for an appeal against the decision of rejection is filed. However, if the concerned trial is withdrawn and the period for appeal against decision of rejection does not expire, an applicant may file a divisional application within the designated period.
Where a divisional or converted application is filed after the statutory period expiry, an examiner shall provide an opportunity for petition to an applicant and then return the application back to an applicant pursuant to the Article 11 of the Enforcement Rules of the Patent Act.
(3) Where an application has been invalidated, withdrawn, abandoned, or confirmed for decision of rejection, division or conversion shall not be made based on the application. Also, a converted application cannot be filed after a registration of the establishment of the patent right is made for the original application.
Where an original application falls under the abovementioned case, an examiner shall provide an opportunity for petition and then return the application to an applicant.
Where an original application procedure closes after a divisional or converted application has been filed legitimately, an examiner regards the application as valid and begins examination.
Where an application contains both a reason for inadmissible division (conversion) and a ground for rejection, an examiner shall in principle confirm the admissibility of conversion (division) before notifying the ground for rejection. However, where the ground for rejection is nothing to do with a retroactive filing date (admissibility of conversion or division), an examiner may deliver a warning notice of inadmissible division (conversion) and a notice of grounds for rejection simultaneously.
Where a notice of inadmissible division (conversion) is delivered, an examination shall be conducted as of the filing date of divisional (converted) application. However, if a violation of division (conversion) scope is legitimately cured during an examination stage, an examination shall be conducted retroactively on an original filing date.
A converted application shall be treated in the aforementioned manner.
4.5 Application by a Person Entitled to the Grant of a Patent
Where an application by the lawful holder is filed with the Form (xiv) in the Enforcement Rules of the Patent Act (including an application where an applicant argues his/her legitimacy as the lawful holder in the written statement of argument during an examination stage), an examiner shall study the legitimacy of an application before any other grounds for rejection. If an examiner doubts an applicant's legitimacy regarding the abovementioned requirements of ①, ③ and ④, he/she shall deliver a notice stating that a filing date shall not be retroactive.
Where the requirement of ② aforementioned is not satisfied, except for special cases, an examination shall be deferred. The examination shall be resumed promptly after a decision to patentability or a invalidation trial is confirmed.
Where an application by the lawful holder includes inventions, which fall beyond the aforementioned scope (for example, an application by the lawful holder involves a multiple number of inventions, among which only some inventions fall within the scope of inventions in an application by the unentitled person), the filing date of an application by the lawful holder shall not be retroactive in the examination.
4.6 International Patent Application
(1)「International Patent Application」is an international application where the filing date is
established under the Patent Cooperation Treaty(PCT) and Korea is designated as a designated State for obtaining a patent.
Except for some exceptional clauses of the Act including enlarged earlier application, an international patent application is treated as an ordinary patent application filed on the international filing date. In this regard, the international filing date becomes the patent filing date, while the description, claims, and drawings having submitted at international application are considered as legitimate description and drawings pursuant to the Article 42 (2) of the Patent Act.
An international application filed in foreign languages is deemed to have been withdrawn if its Korean translation is not submitted according to the Article 201 of the Patent Act.
An examiner who is in charge of an international application shall pay attention to the following matters.
KIPO may request the submission within the designated period.
5. Notice of Grounds for Rejection
(1) The Patent Act (Article 62) stipulates that the examiner, before the decision to reject an application, should notify an applicant of the grounds for rejection and give him/her an opportunity to submit a written argument with specifying a designated period.
This provision is designed to prevent errors or mistakes by an examiner since he or she shall not be always expected to have the advanced knowledge requisite to a judgment to patentability in a claimed invention. And also it would be too harsh to reject a patent outright without giving an error correction opportunity under the First-to-File rule.
The grounds for rejection are as follows.
① Where a claimed invention is not patentable pursuant to Article 25 ㆍ29ㆍ32ㆍ36 (1), (3) or 44
(Note) The period designated by the Commissioner of KIPO (for an amendment request in accordance with the Article 46 of the Patent Act) is within one month.
5.1 Instructions for Notice of Ground for Rejection
The advice or guidance aforementioned by communication media shall be documented in 'Applicant/Attorney Personal Interview' in「Examination Report」.
5.2 Rejection without Additional Notice of Grounds for Rejection
Where an examiner finds that the grounds for rejection which have been notified still exist to the notice of grounds for rejection with taking any amendments into consideration, he/she should make a decision of rejection without an additional notice regardless of other rejection grounds.
Here,「the ground for rejection have been notified」 refers to a case where the concerned ground for rejection in rejection decision primarily coincides with the previously-notified rejection grounds. Decision of whether to primarily coincide with or not shall not be confined to an expression or a sentence. It shall be evaluated in perspective of whether or not an applicant is practically given an opportunity to submit his/her opinions.
The followings are examples where primary coincidence is not admitted and therefore the notice of grounds for rejection is issued again.
(1) Where different provisions of the Act and Rules are applied to the same claim, an examiner shall issue the notice of the ground for rejection again.
For example, grounds for rejection such as absence of novelty or inventive step, claims with no supporting detailed description, and deficiency in claims and detailed description are not deemed to be primarily coincident with each other. They shall be treated as separate, individual ground for rejection.
However, where despite the fact that different provisions of the Act and Rules are applied, the claimed invention becomes identical (including de facto identical. Hereinafter the same shall apply) with the invention in the claim where the ground for rejection had been already notified, the grounds for rejection between these claims are regarded as primarily coincident. An examiner shall render a decision of rejection based on this ground and shall stipulate this ground in a written decision to reject.
instead of issuing a rejection decision, shall deliver the notice of grounds for rejection and provide an opportunity for an applicant to submit an opinion. Where an applicant states a new invention in the claim number that had been deleted through amendments, an examiner shall treat this claim as newly established.
However, where the invention described in newly-established claim is identical with the invention in a claim to which the ground for rejection had been notified, an examiner may render a rejection decision by the rejection ground in the claim to which the rejection ground had been notified.
(4) Where an invention becomes identical with a claim in which the grounds for rejection have never been notified, except for special circumstances under which it becomes also identical with the invention in other claim in which notice of grounds for rejection is already notified, an examiner should render the notice of grounds for rejection again.
(Note) The judgment of whether or not amendments changes or expands the scope of invention in a claim (including de facto change or expansion) does not influence to determine the primary coincidence among grounds for rejection.
5.3 Types of Notice of Ground for Rejection
Notice of grounds for rejection can be classified into two different types. Depending on the type of notice, an applicant shall comply with different restrictions in terms of scope of amendments in the specification or drawings.
One is a notice in which an examiner notifies only new rejection grounds incurring from the amendments according to the previously-issued notice of rejection grounds (hereinafter 'final notice of grounds for rejection') and the other is a notice which is received by an applicant first time or not a last time (hereinafter 'non-final notice of grounds for rejection').
5.3.1 「Non-final Notice of Grounds for Rejection」
(Ex1) In below example, an examiner has issued the non-final notice of grounds for rejection and examines again the claim whose insignificant description deficiency (when referring to the detailed description, A' is deemed to be A) is amended. During this examination, an examiner discovers prior art for equipment comprised of Constituents A+C and decides to issue the notice of grounds for rejection. In this case, an examiner shall issue the non-final notice of grounds for rejection, as this is related to novelty or inventive step in inventions of claims before amendments.
After AmendmentBefore Amendment
【Claim 1】: Constituent A' or B with C attached【Claim 1】: Constituent A or B with C attached
(Ex2) Where having notifying the rejection ground to only a part of two or more inventions stated in a single claim, and then notifying the grounds for rejection to the remaining inventions afterwards, an examiner shall issue the non-final notice of grounds for rejection despite that the claim has been amended according to the notice.
(4) Where the grounds for rejection are established due to reasons other than amendments, an examiner shall issue the ‘non-final notice of grounds for rejection’.
For example, when issuing the first notice of grounds for rejection, no defects had been found in terms of legal competency as a foreigner. However, after amendments, a foreigner loses the right to enjoy patent according to the Article 25 of the Patent Act, this ground for rejection is not generated according to amendments. Therefore, this is issued as the non-final notice of grounds for rejection.
5.3.2 「Final Notice of Grounds for Rejection」
Where the ground for rejection incurs from amendments corresponding to the notice of the grounds for rejection having been noticed to an applicant, an examiner shall deliver the final notice of grounds for rejection. In other words, an examiner shall issue the final ground for rejections in case where a rejection ground which had not been exist or does not need to be examined prior to amendments, is caused newly or requires an examination after amendments.
Amendments according to the notice of ground for rejection having been issued previously are a prerequisite for the final notice of grounds for rejection. In other words, the final notice of grounds for rejection can be issued only when the written amendment has been submitted and a new rejection ground incurred in the amendment confirmation section.
Specific examples regarding the final notice of grounds for rejection are as follows.
(Ex1) In this below example, an applicant amends claim 1 corresponding to the notice of rejection ground (violation of novelty or inventive step) and remedies this ground. However where the addition of constituent D after amendment raises a need to cite a prior art including D, it is regarded as the rejection grounds incurring from amendments. The final notice of grounds for rejection is issued in this case.
If composition obscurity of inventions relating to constituents ‘A and B’ had been the ground for rejection, it would be the ground for reason having been existed before amendments of attachment D. Therefore, in this case, the final notice of grounds for rejection cannot be issued.
Before Amendment After Amendment
【Claim 1】: Constituent A and B with C attached【Claim 1】: Constituent A and B with D attached
(Ex2) Where a claim is expanded after amendments according to the notice of ground for rejection that is description deficiencies, and subsequently results in a violation of novelty or inventive step, an examiner is required to review prior art again by requesting amendments. In this case, an examiner shall issue the final notice of grounds for rejection despite the fact that both grounds for rejection (i.e. description deficiency and lack of novelty or inventive step, in the example above) are pertinent to the same claim.
5.3.3 Selection of Notice of Grounds for Rejection (Final or Non-final)
5.4 Examination on a Claim-by-claim Basis
5.4.1 Purpose
An examiner examines an application filed for in compliance with the requirements of patentability. Even if only a single ground for rejection lies in an application, a patent shall not be granted based on that application. Therefore, where an examiner notifies grounds for rejection regarding an application comprised of two claims without full disclosure of specific for each claim, an
Under the examination system by each claim, when notifying the ground for rejection regarding an application comprised of two claims, an examiner shall stipulate the concerned claim
5.4.2 Instructions for Written Notice of Ground for Rejection
A written notice of grounds for rejection shall include [Examination Outcomes], which is comprised of「Claims to be Examined」,「Relevant Provision regarding Grounds for Rejection」,「Patentable Claims」 and [Specific Grounds for Rejection] for matters notified as grounds for rejection. Also, matters, which are not grounds for rejection but still useful for applicant's response, can be included in「Considerations in Amendment」. Specifics for each part are as follows:
rejection and its relevant provisions of the Act. If the ground for rejection is not directly related to claims, the matters containing the ground for rejection are stated herein.
Where an amendment adds new matters or is not made within the prescribed scope of a divisional or converted application, the matters either newly added or fallen out of the scope of a converted or divisional application shall be stated as grounds for rejection.
※ Example
| Matters | ||
| No | Relevant Provision in the Patent Act | |
| Notified as Grounds for Rejection | ||
| 1 | Detailed description of the invention | Article 42 (3) (deficiency in detailed description) |
| 2 | Claims 6 -8 | Article 42 (8) (manner of describing the scope of claims) |
| 3 | Claims 10 -14 | Article 45 (scope of a single patent application) |
| 4 | Claims 1, 4 and 6 | Article 29 (2) (inventive step) |
| 5 | Detailed description, Claim 15 | Article 52(1) (scope of divisional application) |
(3)「Patentable Claim」enumerates all claims that are not identified as the ground for rejection upon its notice.
Exceptionally, even if a claim itself has not been identified as the ground for rejection, however, the claim which falls under the following cases may not be stated under「Patentable Claim」; where a special circumstance makes it difficult to assess patentability regarding the concerned claim upon the notice of the ground for rejection, or where a claim is judged not to be patentable due to not the claim itself but other grounds related to such claim. In this case, the reason for not-stating patentable
claims shall be explained in the「Considerations in Amendment」. This is designed to help an applicant to respond to the notice of the ground for rejection without difficulties, where an examiner clearly discloses his/her opinion about the concerned claim.
It is noted that「Patentable Claim」is not an examiner's final decision. It is only a decision at the point when the notice for the ground for rejection is issued. Therefore, where a new ground for rejection is discovered afterwards, an examiner shall notify the ground for rejection again without binding to his or her previous decision. Also, even if an examiner states that a part or whole claims can be patentable, he/she may make a final decision to reject in the case where any of the grounds for rejection is not solved after an applicant's response.
※ Examples the ground for rejection) into the patentable claims, and other considerations for amendments except for the notified grounds for rejection shall be disclosed.
| Claim 1 A(Constituent1) B (Constituent2) C (Constituent3) | Cited Invention 1 Publication in Patent Gazette No.○○-○○○○ A (location of its description) B (location of its description) | Cited Invention 2 US Patent No.○○○○○○ C' (location of its description) |
|---|
| Cited Invention 1 | Cited Invention2 | ||
|---|---|---|---|
| Claim | US Patent Publication | US Patent Publication | |
| No. ○○-○○○○ | No. ○○○○○○ | ||
| Claim1 | A(Constituent1) | A (location of its description) | |
| B(Constituent2) | B (location of its description) | ||
| C(Constituent3) | C' (location of its description) | ||
| Judgment | C in constituent3 is practically same as C' in cited invention 2. As A and B in cited invention 1 are easily combined with C' in cited invention 2, claim 1 can be invented without difficulties using cited 1 and 2. | ||
(Note) If an examiner intends to use the contents in「Considerations in Amendment」as the grounds for rejection, he/she shall make notification of the ground for rejection again.
5.4.3 Preparation of Written Decision of Rejection
A written decision of rejection is prepared with the same method as a written notice of grounds for rejection, except that 'a matter notified for the ground for rejection' in [Examination Outcomes] is replaced with ' a matter where the ground for rejection is not overcome'. Where a written statement of argument and a written amendment in response to a notice of grounds for rejection are not submitted, an examiner may not separately state [Examination Results] and [Rationale for Decision to Reject].
where grounds for rejection are not overcome and accordingly the decision to reject the application shall be made and their relevant provisions of the Act shall be disclosed.
Where a new claim is added but it still includes the already-noticed ground for rejection, it is considered that an opportunity for written argument has been given and then it is stated as matters where grounds for rejection are not overcome, provided however that a claim whose grounds for rejection have been notified before amendments and a newly added claim shall be same.
※ Examples
| No | Matters Where Rejection Grounds Not Overcome | Relevant Provisions |
|---|---|---|
| 1 | Detailed description in claimed invention | Article 42(3) (deficiency in detailed description) |
| 2 | Claims 1, 4 and 6 | Article 29 (2) (inventive step) |
(3)「Patentable Claims」stipulates both claims where no grounds for rejection are notified and claims where the having-notified grounds for rejection have been overcome during the examination. Exceptionally, however, an examiner may not indicate patentable claims in the following cases; where a judgment for patent requirements is not made in the claim due to some certain reasons including an addition of a new claim, where an examiner discovers new grounds for rejection in the claim
incurring from an amendment, or where the claim is judged to be unpatentable as it is related to other grounds for rejection.
Likewise, where a claim, which has not been notified as the ground for rejection, is not stipulated as patentable claim, an examiner shall explain a reason in「Considerations」. By doing so, an examiner can clarify his/her opinion about a claim which is not included as a patentable claim despite the fact that it contains no ground for rejection. This clarification helps an applicant in his or her response to an examiner's decision to reject a patent as follows: where an applicant requests for a reexamination by submitting the written amendment, an applicant may delete claims excluding patentable ones. Where an examiner judges that there are no patentable claims as of the time for decision to reject a
patent, no entries are made in「Patentable Claims」.
(4)「Grounds for Decision to Reject」writes more specific rationale regarding the ground for rejection that have not been overcome, in order for an applicant to better understand. Where the ground for rejection is related to a claim, an examiner shall specifically state reasons for rejection by the category of each claim. If the same reasons had already been notified in the written ground for
rejection, an examiner may avoid redundant statement by indicating its source, instead of stipulating the same reason herein again.
Where both a written argument and an amendment are submitted together, an examiner shall state reasons for why applicant's amendment does not overcome the ground for rejection and why the arguments made by an applicant cannot be admitted. In such case, for claims without practical amendments or for dependent claims without direct amendments, just a statement of 'the ground for rejection having notified is not overcome' would be sufficient.
Where only a written statement of argument is submitted without a written amendment, an examiner states the reasons why he/she denies an applicant's argument along with matters containing unresolved grounds for rejection.
(5)「Considerations in Amendment Submission」states issues that are not the ground for rejection but
can be referred upon submitting the written amendment in subsequent procedures such as a request for reexamination.
For example, where a decision to reject the application is rendered due to the previously-notified grounds while new grounds are also produced from addition of claims or an amendment, such can be added in「Considerations」.
5.4.4 Instructions for Examination on Claim-to-claim Basis
(1) Even if the detailed description has deficiency, claims, which seem to relate to such deficiency of the detailed description but do not contain any grounds for rejection themselves, can be classified under [Patentable Claims]. However, it does not apply for some exceptional cases where it is difficult to make a judgment about patentability of a claim upon the notice of the ground for rejection, provide however that a claim is related to the ground for rejection in the detailed description having been notified, or where an examiner judges that any amendment by an applicant cannot remedy the
ground for rejection in the detailed description. In such case, in「Considerations in Amendment
Submission」, an examiner shall describe why he/she does not include such claims as patentable claims.
Also, an examiner includes claims without grounds for rejection under the [Patentable Claims] among claims falling under the group (where inventions in this group have been evaluated in terms of the patent requirements). On the other hand, if an examiner found grounds for rejection regarding novelty and inventive step for those claims, he or she shall notify the ground for rejection together with grounds for rejection regarding unity of invention for the claims in the other groups.
Where considered necessary to notify lack of unity before anything else from the perspective of examination efficiency, an examiner shall state in「Considerations in Amendment Submission」 that he/she has not performed the patent requirements test for the invention with no ground for rejection,
though it is subject to the group (where inventions subject to this group have been evaluated whether to satisfy their patent requirements). An examiner shall not include this claim in the「Patentable Claims」.
5.5 Disclosure of Information on Prior Art Documents
Where an examiner prepares the ground for rejection in relation to the technical subject matter of a claim, he/she shall cite supporting documents for his/her rationale. Disclosure methods for information on prior art documents, which are not decided in this section, shall comply with WIPO Standard ST.14.
5.5.1 Citation of Patent Documents
Title and document number are stated the same as they are in the concerned patent documents. Specific examples can be found in the following table.
| Korea Publishing Country | Registered Utility Model Gazette No.oo-oooo(19××. ×. ×.) Published Patent Gazette No.oo-oooo-oooooo(19××. ×. ×.) Published Utility Model Gazette No.oo-oooo(19××. ×. ×.) Registered Patent Gazette No.oo-oooo(19××. ×. ×.) Examples of Citations |
| US | US Patent No. US ooooooo (20××. ×. ×.) US Patent Application Publication No. US oooo/ooooooo (20××. ×. ×.) US Patent Abstract No. US ooooooo (19××. ×. ×.) |
| Japan | JP Patent Gazette A No.ooooooo(20××. ×. ×.) JP Registered Utility Model Gazette U No.oooooo(20××. ×. ×.) JP Published Patent Gazette AH No.oo-oooooo(19××. ×. ×.) JP Published Patent Gazette A No.2000-oooooo(20××. ×. ×.) JP Published Model Utility Gazette S No.oo-oooo(19××. ×. ×.) |
| UK | UK Patent Publication No.ooo Abstract (class ooo)(19××. ×. ×.) UK Patent Publication No.ooo Abstract(Group ooo)(19××. ×. ×.) UK Patent Publication No.ooo Abstract(Heading ooo)(19××. ×. ×.) UK Patent Publication No.ooo(19××. ×. ×.) ※ In case of citing an abstract of the description, the classification of abstracts shall be stated in parenthesis ('class' refer to abstracts before 1930, 'Group' refers to abstracts from 1931 to No.940,000, 'Divisions' refer to abstracts from No.940,001, and 'Heading' is a sub-category of 'Divisions') |
| Germany Int. Application | DE Patent No.oo-ooo(class oo)(19××. ×. ×.) DE Patent Application Publication No.oo-ooo(class oo)(19××. ×. ×.) DE Patent Application Publication No.oo-ooo(19××. ×. ×.) ※ The description of patent in Germany is classified with 'class' for the patent document published in 1955 (No. 624,334 -No. 655,806) and after 1957, which shall be stated in parenthesis. ※ The published description of patent application in Federal Republic of Germany(West Germany) has been published from January 1, 1957 (No.1,000,001). The description published between 1959 and 1960(No.1,048,241-No.1,096,300) is classified with 'class' , which shall be stated in the parenthesis. International Publication WO78/ No. oooooo (19××. ×. ×.) |
(Ex) Published Patent Gazette No.oo-oooo-ooooooo(19××. ×. ×.) (No. of page and drawing) Published Patent Gazette No.oo-oooo-ooooooo(19××. ×. ×.) (Speed Reduction Gear) Published Patent Gazette No.oo-oooo-ooooooo(19××. ×. ×.) (Drawing No. a, b, c )
5.5.2 Citation of Non-patent Documents
(1) Depending on periodical publication, non-patent documents are cited as follows:
| Type | Citations Instructions |
| Periodicals, Non-Periodicals | (ⅰ) Order of description when citing publications is as follows; Name of Author, Title of Thesis, Title of Publication. Location of Publication: Publisher. Publication Date, Number of Volumes, Number of Issues, Page No. Name of Author, Title of Thesis, and Title of Publication shall be discerned using a period (.), while Location of Publication and Publisher is distinguished using a colon (:). Put a period(.) after |
Publisher. Others are divided using a comma(.( �/span>.
(ⅱ) Title of publication is generally not stated in abbreviations. (ⅲ) Number of volumes and issues are stated as 'Volume oo, No.oo’. For English publications, 'Vol. oo, No. oo'
publication date in the documents do not inscribe a publication day, then month/year of the publication is sufficient. (ⅵ) For unclear publication date, the date of obtaining the documents can be stated instead, with a clear explanation for the reason. (ⅶ) For a publication with no concerns for misunderstanding of its publisher, name of publisher can be omitted. (ⅷ) Where a location of publication is not well known place, its country shall follow right after the location, which is distinguished with comma (,). For publications published in Korea, the location of
publication is omitted.
For a translated book, Name of Author (or Editor), and Name of Translator are the description order. (ⅱ) Name of Author and Book Title shall be discerned using a period (.), while Location of Publication and Publisher is distinguished using a colon (:). Put a period(.) after Publisher. Others
are divided using a comma(,) (ⅲ) For a lecture, collective works, or series, title of lecture or series and the number of volumes in
Books collective works shall be stated before book title.
(ⅶ) Page Number, is stated page number with 'pp.' before numerals. Where citation involves plural pages, the rules for periodicals shall be complied with.
(2) Where a part of publication is cited for the grounds for rejection, in order to clearly stipulate which part of document is used for the ground of rejection, page number or drawing number shall be included in parenthesis.
(Ex) Journal of Korean Chemistry Society. Corporation, Korean Chemistry Society. 19××.×.×., Vol.o, No.o (pp. o or pp. o)
Hong Gil-dong. Steam Engine. Daejeon: oo Publication Co. 19××.×.×., Edition o (pp. o)
5.5.3 Citation of Electronic Documents
Where citing electronic documents searched from CD-ROM, the internet, or on-line DB, an examiner shall state the general information of the cited documents along with types of search medium (state in a brace), search date (state in a brace after the publication date of the cited documents) and search site.
(Ex) Joint Authorship of 3 including Hong Gil-dong and et al. Method to Promote Search Speed through Effective Management of Patent Documents. Korean Association of Computer, [online], February 2001, [Search on July 15, 2010], Internet: <URL: http://www.kipo.go.kr/papers>
6. Instructions for Written Argument and Others
6.1 Extension or Reduction of Designated Period
Where the Commissioner of KIPO or an examiner designates the period for a patent procedure, he/she may, upon request shorten or extend the period (hereinafter 'designated period'), or extend the period ex officio. In such cases, the Commissioner of KIPO etc. shall decide whether to shorten or extend the period in a way that does not unlawfully violates the interests of the interested parties involved in the relevant procedure.
6.1.1 Extension and Approval of Designated Period for Substantive Examination
⑦ Or other cases where considered unavoidable to extend the period
※ Where the period extension request is filed on an application by third party, request reasons of ①～⑤ are not admitted.
(Note) Fees shall be refunded where a request for period extension is rejected.
6.1.2 Extension and Approval of Period Designated for Formality Examination
(Note) Fees shall be refunded where a request for period extension is rejected.
6.1.3 Reduction of Designated Period and Others
6.2 Instructions for Written Argument
6.3 Treatment of Amendments
6.3.1 Method to Confirm Amendment of Detailed Description, Claims and Drawings
(1) The final specification to be examined shall be determined automatically through the Patent Net (Internal examination supporting tool) after reflecting amendment to the detailed description, claims and drawings. An amendment to the full text of the specification shall be replaced as the final specification to be examined.
Refer to the following example for specific method.
(Ex) Method to determine the description to be examined where the 1st and 2nd written
amendment having been submitted within due time.
| Matters to be Amended Detailed Description Claim 1 Claim 2 Claim 3 -Claim 10 Drawing(s) | Initial Application ◇ ○ □ △ ☆ ♤ | 1st Written Amendment ◆ ● ▒ ♠ | 2nd Written Amendment ■ | 2nd Amendment ◆ ● ■ ♠ | 2nd Amended specification ◆ ● ■ △ ☆ ♠ | 1st Amended specification ◆ ● ▒ △ ☆ ♠ |
|---|
※ As seen in the above example, where an applicant amends detailed description, claim 1, claim 2, and drawing(s) of a claimed invention in the 1st written amendment and submits the 2nd written amendment with claim 2 amended. the 2nd amendment is determined to be a combination of final amendments individually made in claim 1 and claim 2 ((Detailed Description(◆), Claim 1(●), Claim 2(■) and Drawing(s)(♠)), and the 2nd amended description is determined to be a combination of matters not amended in the 2nd amendment and an original description. (Detailed Description(◆), Claim 1(●), Claim 2(■), Claim 3(△), ....Claim 10(☆) and Drawing(s) (♠)).
(2) Where an amendment in response the final ground for rejection or made upon the request for reexamination is dismissed pursuant to the Article 52(1) of the Patent Act, an examiner considers the amendment deemed to have never been submitted. The dismissal of amendment shall be referred to
this section in「11. Amendment in Response to Final Notification of Ground for Rejection」.
6.3.2 Additional Matters to be considered
Where a date of applicant's receipt of the grounds for rejection, which can be confirmed by the special mail (parcel) registered receipt, is the date of amendment submission, an
① Where just Amendment a is submitted
An examiner shall examine again the specification that have been reflected of Amendment a.
② Where Amendment a and Amendment b are submitted
An examiner shall examine again the specification that have been reflected of Amendment a and Amendment b.
② Even for documents or samples with no return request, an examiner shall also pay special attention in storing them undamaged just in case where those documents or samples are requested in trial
③ An examiner commences a procedure to return them right after examination closes.
(Note) Where a person who has submitted documents or samples, intends to get them back, he/she shall state the purport to the return request form. After closing the examination, an examiner shall designate the return period and notify a submitter to receive the documents or samples within that period.
Where no request has been made for return of documents or samples, or where a submitter fails to go through return proceeding within the designated period, documents or samples can be disposed of as decided by the Commissioner of KIPO.
(7) An examiner may use evidential documents submitted for information for his/her examination according to Article 63 bis.
Where it is certain that evidential documents are periodicals or their copies, or copies of description or drawing(s) having been published before the application date, an examiner may use them as prior art without additional examination of evidence.
Where evidential documents submitted are documents other than periodicals or their copies, or copies of description or drawing(s) having been published before the application date, an examiner may use them as prior art only if an examiner is confident of the fact to be verified without examination of evidence. However, where an applicant argues the existence of the evidential fact in the written argument, an examiner shall not admit the fact unless he/she finds its admission justifiable.
(Explanation) The Patent Act has no provisions regarding an examination of evidence during examination. Therefore, where the evidential documents submitted for reference information are documents other than periodicals or their copies, or copies of description or drawing(s) having been published but the fact to be verified cannot be confirmed with confidence, an examiner shall not decide to reject the application based on this evidence.
(Note) Except for an application which has been invalidated, withdrawn, or abandoned, or whose patent grant or rejection has been decided by an examiner, anyone can provide relevant evidence to an examiner to argue that an application of the claimed invention shall not be patented. Information provision can be made by any person or corporation, except for an incompetent minor who shall appoint a legal representative for such action. In the meanwhile, an examiner may refer documents or information provided by a group or association instead of invalidating or returning them.
7. Additional Search
During the examination stage, an examiner shall conduct additional searches for the following cases.
⑤ Or other cases where considered necessary for additional research
8. Examination Deferral or Extension of Processing Period
9. Document Delivery
9.1 General Principles
In case of two or more agencies, except for special cases, a legitimate receiver shall be the attorney described first in a written patent application.
For a multiple number of attorneys with general power, documents shall be delivered preferentially to the attorney having appointed for the relevant case.
Where a receiver is incompetent, delivery shall be made to his/her legal representative.
Where twomore applicants involve in patent application, delivery shall be made to a
(3) The delivery of documents shall be made to residential or business address of a entitled receiver unless reporting other address for delivery. The change of delivery address shall be reported without delay.
(Note) Where a failure of delivery is due to rejection by a receiver without justifiable reason, the date of sending is regarded as a receiving date. More details regarding document delivery can be referred to 「Part 1 General Rules」.
9.2 Delivery by Public Notification
When documents cannot be delivered because the residential or business address of the addressee is unclear, the documents shall be delivered by public notification. 'residential or business address of the addressee is unclear' herein refers to the case where the address of the addressee cannot be verified even using the resident registration use system. It includes the case where two or more persons go through a patent procedure and all their addresses cannot be verified.
Delivery by public notification shall be made as follows.
① Where documents are returned, an officer in general affairs division of examination bureau shall file the facts regarding the document returns such as return number, reason of return to a computer system and communicate to an examiner in charge.
Where an examiner is notified of the aforementioned, he/she shall verify the address of a legitimate receiver by telephone, to which an examiner shall send again the returned documents and the "Guide to Report on Information Change in Applicant" with attachment of the form to report the change of applicant's information (i.e. Form(v) in the Enforcement Rules of the Patent Act).
※ Where a receiver is a corporation, the Resident Registration Use System cannot be used. In this case, an examiner shall exert most available efforts to confirm a correct address of a corporation and send documents to a legal address at least once before public notification.
(Note) The delivery shall be made according to the Rules on Office Management and Patent Net System. However, an examiner may adopt a different delivery method where through case by case review an examiner finds a new delivery method for sure sending to a legitimate receiver.
10. Personal Interview
Where an applicant or his/her attorney (hereinafter 'the party') requests or where an examiner considers necessary for a prompt and fair examination, an examiner may have a personal interview with the party as ancillary method for examination. Cases requiring a personal interview are as follows; where considered necessary for comparative explanation between the claimed invention and the prior art, where clarification of the ground for rejection is required, where the written argument requires explanation for clear understanding, where the subject matter of the claimed invention is so complicated and sophisticated that its understanding is difficult, or others where an examiner recognizes a need for a personal interview.
10.1 Request and Grant for Personal Interview
repeatedly or for other issues unrelated to the examination, an examiner may ask the party to modify the contents of an interview request or disregard such request aforementioned.
Where communicating with the party through telephone, fax, or e-mail regarding an interview, an examiner shall include dates and persons in communications, due date and form of an interview, and a contact number in the examination report in the Patent Examination Processing System.
10.2 Procedure of Personal Interview
A participant with delegation limited to a personal interview shall submit a corresponding proxy statement at every interview. However, a participant may combine delegations for multiple interviews into one proxy statement by stating all the application number on the one proxy statement.
A legitimate interviewee may accompany an inventor or a person related to a patent.
(4) In the interview log, an examiner shall state an application number, name of an examiner and participants, and contents and result of interview. The interview log, which is sealed with signatures of an examiner and participants, shall be submitted to an officer in charge at the patent customer service center. The contents of an interview shall be included in the examination report of the Patent Examination Processing System.
When an examiner and an interviewee exchange opinions regarding the restricted issues, the opinion exchanged shall be briefly stated in the interview log by the examiner.
10.3. Instructions of Personal Interview
(Note) Where an interview is held within the period designated for the submission of the written statement of the argument, a participant shall submit the responding documents (such as the written statement of the argument, the amendment, etc) in accordance with the agreement at the interview. If an applicant decides respond differently from the agreement made at the interview, he/she shall communicate the purport to the examiner in charge by telephone, fax, e-mail, or post mail.
A personal interview shall not be a basis for an applicant to simplify or omit requisite statements in the written statement of the argument.
10.4. Personal Interview on Visit
11. Amendment in Response to Final Notification of Ground for Rejection
Unlike the non-final notification grounds for rejection, when receiving the amendment in response to the notification of the final grounds for rejection, an examiner shall determine whether to dismiss the amendment before assessing the requirements of patentability and confirm matters to be examined.
When submitting the written argument, an applicant may argue that the notification of the final ground for rejection issued by an examiner is inappropriate as the final ground. Where such argument is made, an examiner shall review whether it was appropriate to set it to “the final notification of grounds for rejection”, considering the applicant’ assertion in the written opinion.
11.1 Remarks related to ‘Final Notification of Ground for Rejection’
Where an examiner notifies of final grounds for rejection but is supposed to notify of non-final grounds for rejection, and applicant submits the amendment only in response to the final notification of grounds for rejection (for example, amending by reducing the claim without adding a new claim) or fails to conduct amendment, an examiner shall notify grounds for rejection again instead of making a decision to reject the application, despite that the final grounds for rejection are not overcome. The
type of the ground for rejection shall be decided with referral to「5.3 Types of Notification of Grounds
for Rejection」.
② Where final grounds for rejection are notified to an applicant, but he or she makes an amendment with considering ‘the final notification of grounds for rejection’ as ‘a non-final notification of grounds for rejection.’
Where an applicant, arguing the inappropriateness of the examiner’s issuing the final notification of grounds for rejection, submits the amendment in response to non-final notification of grounds for rejection, an examiner shall make a decision to reject the application.
For example, where an examiner notifies the deficiency in the description (which should have been notified in the non-final ground for rejection) as the final ground for rejection, an applicant argues that the deficiency had been in the application having been filed first and submits the amendment where a new claim is added (recognized as the amendment according to the first ground for rejection). In this case, an examiner shall admit the amendment and make a decision to reject a patent application afterward if the amendment still fails to remedy the deficiency in the description.
11.2 Examination of Amendment
Here, the occasion of「where new grounds for rejection occur from the amendment」refers to the occasion where the submission of the concerned amendment causes unprecedented grounds for rejection (where the concerned amendment leads to the deficiency in the description or where a new ground for rejection regarding novelty or inventive step occurs). The new ground for rejection does not include the followings; the grounds for rejection which have been noticed prior to the amendment and the grounds for rejection which have existed without notification.
The judgment for the case「where a new ground for rejection occurs from the amendment」 can be referred to the following examples.
(Ex 1)
Claim 1 : Equipment comprised of A+B [Final Notification of the Grounds for Rejection] Claim 1 is denied of inventive step due to cited invention1 [Specification after Final Amendment]
Claim 1 : Equipment comprised of A+b (still denied of inventive step due to cited invention1)
[Amendment Admitted] Since no ground for rejection is generated from the amendment of claim 1, the amendment is admitted [Decision to Reject] The claim 1(A+b) is denied of inventive step due to the cited invention1. The decision
to reject a patent is made.
(Ex 2) Claim 1 : Equipment comprised of A+B
[Final Notification of the Grounds for Rejection] Claim1 is denied of inventive step due to the cited invention1 [Specification after Final Amendment]
Claim 1 : Equipment comprised of A+B+C
(Inventive step is admitted for the cited invention 1 but not for the cited inventions 1 and 2. The cited invention 2 is required additionally due to the addition of C) [Amendment Dismissed] The amendment of claim 1 generates a new ground for rejection. Therefore, the
amendment is not admitted, resulting in the dismissal of the amendment. [Decision to Reject] Claim 1(A+B) is denied of inventive step due to the cited invention 1.
(Ex 3) Claim 1 : Equipment comprised of A+B Claim 2 : Equipment comprised of claim1 with C attached
[Final Notification of the Grounds for Rejection] Claim 1 is denied of inventive step due to the cited invention. [Specification after Final Amendment] Claim 1 : Delete Claim 2 : Equipment comprised of claim1 with C attached
[Amendment Admitted] The amendment by deleting the claim 1 is regarded as the reduction of scope of the claim. Though the deletion of the claim1 causes a new ground for rejection (i.e. deficient statement of claim2), this amendment is admitted according to the Article 51 (1) of the Patent Act
[Final Notification of the Grounds for Rejection] Since the deletion of the claim1 in compliance with notification of the grounds for rejection causes the deficient statement in the claim 2, an examiner shall notify this deficient statement of the claim 2 in the final notification of the grounds for rejection.
(Ex4)
Claim 1 : Equipment comprised of A+B
Claim 2 : Equipment of claim 1 with C attached
Claim 3 : Equipment of claim 1 or 2 with D+E attached. [Final Notification of the Grounds for Rejection] Claim 1 is unpatentable due to conflicting applications [Specification after Final Amendment]
Claim 1 : Delete
Claim 2 : (Amended) Equipment comprised of A+B+C
Claim 3 : (Amended) Equipment comprised of A+B+D+E
Claim 4: (New Addition) Equipment comprised of A+B+C+D+E [Amendment Admitted] Claim 4 is just an arrangement due to the deletion of the claim1, and substantially corresponds to pre-amendment claim 3. Claim 4 is not newly added. Since the addition of claim 4 is inevitable due to deletion and the amendment is recognized as appropriate, the amendment is admitted.
(Ex5) Claim 1 : Equipment comprised of A [Final Notification of the Grounds for Rejection] Claim 1 is denied of inventive step due to cited invention1 [Specification after Final Amendment]
Claim 1 : Equipment comprised of A+B (Cited invention 1 includes B, denying inventive step in claim 1) [Amendment Admitted] The rejection reason having notified is that the invention in claim 1 is denied of
inventive step due to the cited invention1. Where the amendment does not generate new ground for rejection, the amendment is admitted. [Decision to Reject] Claim 1(A+B) is denied of inventive step due to the cited invention1
(Note) An applicant cannot appeal against a decision to dismissal of amendment during the substantive examination, which can be dealt only in the trial against the decision to reject an application. When a reexamination is requested, a decision to dismissal of amendment made prior to the reexamination request shall not be appealed.
11.3 Examination after Admission of Amendment
generated, an examiner shall notify an applicant of these newly found grounds for rejection. The type of the ground for rejection shall be referred to「5.3 Types of Notification of Grounds for Rejection」.
(Note) Where an examiner overlooks the fact that an inappropriate amendment in response to the final notification of grounds for rejection is made and then makes a decision to grant a patent or notifies first or final grounds for rejection, he/she cannot dismiss the previous amendment retroactively upon his/her discovery.
11.4 Examination after Amendment Dismissal
again. The type of the ground for rejection shall be referred to「5.3 Types of Notification of Grounds for Rejection」.
12. Final Decision
Once completing the examination, an examiner shall make a decision to grant or reject without delay.
Where an examination of formalities discovers deficiency in application procedure (claims subsequent to application, application filing procedure, etc), the final decision shall be made after the procedural deficiency is remedied.
12.1 Decision to Grant a Patent
12.2 Decision to Reject an Application
12.3 Additional Notes
When examining an application with information provided by a third party as grounds for rejection or an application filed by an unentitled person, an examiner shall take requisite measures before making his or her final decision.
13. Cancellation of Examination Measures
Where an examiner discovers defects in his/her measures during the examination, the very examiner may cancel the measures. The cancellation of a measure loses its partial or whole validity retroactively to the very beginning.
An examiner shall review whether his/her measure during the examination stage falls under cancellation in the following cases; where an examiner resumes the once suspended or deferred application, where an examiner resumes the once closed application including a withdrawn or abandoned application, or where an examiner conducts an examination of application which is not requested for examination.
notice of the measure, or where a process relating to fee payment is not completed, or where the form of notice for cancellation cannot be prepared due to failures in other systems of subsequent procedure.
(5) When cancelling the measure having conducted by him/herself, the concerned examiner shall execute the corresponding subsequent measures.
Chapter 4. Reexamination
2.1 Reexamination Procedure Flow Chart 2.2 Examination of Formalities in Reexamination Request
requested for a trial against decision to reject, and ④ declares the intention to request an reexamination with amendment of the description, drawing(s) or claims.
As the amendment herein includes not only substantial amendment to the description, drawing(s) or claims but also any amendment made in the specification.
Where an amendment does not state the purport to request for examination, it shall not be regarded as being validly submitted within the amendment period (Patent Act Articles 47, 67bis①). An examiner shall regard the amendment as document being submitted after the prescribed period in the Patent Act or Enforcement Decree of the Patent Act (the Enforcement Rules of the Patent Act Article 11) and return the amendment after giving an opportunity for petition.
2.3 Review of Amendment Appropriateness
Judgment to dismiss the amendment having been made upon the request for reexamination shall refer to the above-mentioned section of「11.2 Requirements for Amendment」. 'An amendment according to the final notification of ground for rejection’ reads to ‘an amendment conducting upon
request for reexamination request’.
(Note) The scope of amendment upon the request for reexamination is the same as that of amendment according to the final notification of ground for rejection. For the scope of amendment, Part VI Chapter 2 in this Guideline shall be referred to.
An examiner examines the specification reflecting the AmendmentⅠ and delivers the notice of first rejection ground. And after examining the specification reflecting Amendment II, an examiner discovers that the rejection ground is not amended and accordingly delivers the decision to reject a patent to an applicant. In response, an applicant submits the Amendment III as a procedure of reexamination request. Under this circumstance, (a) an addition to the scope of the matters pursuant to the Article 47(2) of the Patent Act shall be compared with the specification or drawing(s) originally attached to the written patent application, and (b) another requirement for the amendment pursuant to the Article 47 (3) shall be compared with the specification or drawing(s) having reflected the Amendment II.
② Decision of rejection after the amendment dismissal, but before the request for reexamination
During examining the specification reflecting the Amendment II, the examiner discovers another rejection reason incurring from the Amendment II and notify to the applicant the final rejection reason thereafter. And with the judgment that the Amendment III is not sufficient to cure the rejection reason, an examiner dismisses the Amendment III and examines the Amendment II. According to the examination, an examiner makes a judgment that the final ground for rejection is not amended and accordingly delivers a decision to reject a patent. In response, an applicant requests a reexamination with the submission of the Amendment IV. Under this circumstance, (a) an addition to the scope of the matters pursuant to the Article 47(2) of the Patent Act shall be compared with the specification or drawing(s) originally attached to the written patent application, and (b) another requirement for the amendment pursuant to the Article 47 (3) shall be compared with the specification or drawing(s) having reflected the Amendment II.
In other words, since the Amendment Ⅲ has been already dismissed and the applicant shall not protest against the decision for amendment dismissal prior to a request for reexamination shall not be protested, the judgment of requirements for the amendment pursuant to the Article 47 (3) shall not consider the Amendment III.
2.4 Examination after Admission of Amendment
grounds for rejection to the applicant. Types of grounds for rejection can be referred to「5.3 Types of Grounds for Rejection」.
(Note) Where the examiner disregards a partial inappropriateness in the amendment upon the request for reexamination and delivers non-final and final notice of the grounds for rejection or the decision to grant a patent, the amendment shall not be dismissed retroactively even when the inappropriateness is discovered afterwards.
2.5 Examination after Dismissal of Amendment
rejection grounds, an examiner shall again notify the grounds for rejection. Types of grounds for rejection can be referred to「5.3 Types of Notice of Ground for Rejection」.
3. Instructions for Reexamination
Chapter 5. Amendment Ex officio
1. Overview
In the past, when the specification had minor deficiency, the examiner should have notified the rejection grounds and have asked the applicant to amend the deficiency. However, as the number of the notification of the grounds for rejection due to an insignificant error or omissions had increased, it became a problem to procrastinate the examination procedure.
The amendment ex officio by the concerned examiner is therefore introduced to solve the aforementioned problems. When an examiner during the examination discovers only obvious errors such as misspells, omissions, or inconsistent reference signs, the examiner is allowed to amend ex officio the clearly erroneous matters instead of notifying the ground for rejection, which accordingly prevents the examination delays and makes the description of registration without deficiency.
However, the responsibility of the description generally lies in the applicant. In consideration of the Article 47 of the Patent Act, which strictly limits a person eligible for amendment, amendment period, and scope, the amendment ex officio shall be applied within the limited scope as a supplementary exception for the applicant's self amendment.
2. Matters to be Amended Ex officio
(a) Number of drawing misstated
D 1 is cross section of regenerator
D 1 is side view of regenerator → D 2 is side view of regenerator
D 3 is perspective view of regenerator
(b) Misspelled Reference signs in the drawing
3…Gear 3…Motor → 3…Gear 4…Motor
⑥ Misspelling in summary table
When the misspelling is obvious in the summary table according to the detailed explanation of the invention
⑦ Inconsistency in title between the description and the application
The examiner may amend ex officio the title of the invention stated in the description to correspond to that of the application. However, when the title stated in the application fails to satisfy the requirements for invention title under Section II, Chapter 000, the examiner may amend ex officio the inappropriate invention title to the one which is deemed to be proper (use the correction ex officio button on the web-site of Patent Net. Com), and amend ex officio the title of the description correspondingly.
3. Instructions of Amendment Ex officio
The matters to be amended ex officio are limited to self-evident error. When an examiner amends ex officio, he/she should not alter the scope of the claim, and the amendment ex officio shall not be allowed if there arises any possibility of different interpretation.
Where the matters are recognized for amendment ex officio, the examiner shall describe in definite and specific manners that which matters are to be amended ex officio in the written decision to grant a patent. The examiner shall state the reason why the matter is to be amended ex officio in order to help the applicant to decide to accept the amendment or not.
(Example of Notice)
1. Second line of <20> in the description; “…signal ... transmitted …”; “…signal ... transmitted to…”; definite omission
2. 3rd line of the Claim (3); “…Semiconducter Memory”; “…Semiconductor Memory”; definite misspelling
Also, when the examiner describes where to amend ex officio, he/she shall stipulate specifically using ID number or relevant line in the page, so that the applicant may not confuse to determine to accept the amendment ex officio.
(2) When the applicant opposes to accept the amendment ex officio in whole or part, he/she shall submit the written statement of argument before the payment of patent fee, whereby the examiner may make selective decision for the amendment ex officio.
Where the applicant submits the written statement of argument regarding the amendment ex officio, the concerned matter under the amendment ex officio shall be deemed never to have existed. The description is digitized and published in the patent gazette except for the matter that the applicant rejects to accept the amendment ex officio.
(Note) Where the examiner amends the matter which does not fall under the category of the amendment ex officio and the applicant also overlooking such an illegitimate amendment by the examiner publishes the description in the patent gazette, the concerned matter having amended ex officio shall be deemed never to have existed unless the amendment is recognized as legitimate afterward. This is designed to prevent unexpected losses in patentees or the 3rd parties due to an illegitimate amendment by the examiner.