Batch examination now available for IP applications

South Korea

The Korean Intellectual Property Office (KIPO) has announced that batch examination is now available for all types of IP applications. Batch examination allows an applicant to pool together multiple IP applications related to a common product into one examination basket to be processed according to the applicant's designated timeline. Through batch examination, the applicant can seek the examination of multiple applications within a unified examination timeframe, which can be set according to the applicant's request. Applications that qualify for batch examination include patent and utility model applications, trademark applications and design applications.

An applicant that has filed multiple IP applications related to a common product may file a request for batch examination. To qualify for batch examination, all of the IP applications should relate to a single product and each IP application in the batch should be waiting for a first office action. Thus, in the case of patent and utility model applications, a request for examination should already have been filed (in South Korea, a request for examination must be filed within the statutory time limit in order to initiate a KIPO examination of the patent and utility model application).

In addition, the IP applications should fall under one of the following categories:

  • applications practised or under preparation to be practised by the applicant in South Korea (ie, self-practice);
  • applications directly related to the promotion of exportation;
  • applications filed by a venture business enterprise or a technologically innovative small or medium-sized company qualified under relevant laws; or
  • applications derived from developments by an individual or creative company qualified under the relevant laws.

Foreign applicants seeking batch examination will typically qualify under the first category of self-practice.

An applicant must file a formal request along with evidence supporting the grounds for requesting batch examination. In principle, an applicant applying under the self-practice category may submit evidentiary documents such as photographs, product manuals, invoices or other documents showing that the applications are practised or under preparation to be practised by the applicant. Alternatively, in order to avoid such documents becoming part of the record, an applicant can present evidence during a mandatory in-person technical session with the examiner or examiner panel, where the qualifications for batch examination will be reviewed.

Additionally, applicants are required to set a desired timeline when filing a request for batch examination. For instance, applicants should designate:

  • a date for the mandatory in-person technical session with the examiners within seven to 14 days of filing the request for batch examination;
  • an examination undertaking date which is 14 days after the technical session date (this is the date when the examiners are expected to issue a first office action); and
  • an examination closure date between three months and one year of the undertaking date.

Once a request for batch examination has been filed and undergoes a formal review, the applicant will be assigned a date for the mandatory in-person technical session based on the applicant's designated timeline. The examiners assigned to examine the applications may also be required to attend the technical session. An examiner assigned to an application in the bundle is expected to follow the unified timeline for the examination designated by the applicant. An examiner is expected to close the examination (by issuing either a notice of allowance or a notice of final rejection) by no later than the closure date. However, there are exceptions to this requirement - for example, if the examiner finds new grounds that necessitate a search for additional prior art or is compelled to issue an additional preliminary rejection (ie, non-final office action).

During the mandatory in-person technical session, an applicant should explain which IP applications will be bundled for the batch examination and provide evidence to show that the bundled IP applications relate to a single product. The examiners will then decide whether to grant the batch examination and which applications qualify for the batch examination. The examiners may also set the expected undertaking date and closure date based on the applicant's designated timeline.

If an applicant requests an undertaking date that would require an office action to be issued at least three months sooner than the typical wait time for an office action for a patent or utility model application (and at least one month sooner for a trademark or design application), the examiner may request the applicant to file a request for expedited examination for the application. If an applicant fails to request an expedited examination after requested to do so by the examiner, the application may be excluded from the batch examination process.

The batch examination system will allow applicants to coordinate the timing for obtaining multiple IP rights with a product's launch schedule so that new products are appropriately protected. Moreover, batch examination will streamline the examination process, while making it faster and more consistent.

In the case of self-practice for a patent, utility model or design application, an applicant can reduce the burden of showing evidence of self-practice by opting to present such evidence in person to the examiner during the mandatory technical session, instead of submitting the evidence to KIPO. This should be considered if there are any concerns that the evidentiary documents may include trade secrets.

However, given that batch examination was recently introduced, there is no data on whether the success rate for applicants using batch examinations is higher than that under normal examination.

Moreover, no detailed guidelines regarding how to determine the relevancy between applications and a product exist. Relevancy to a single product may cover multiple technologies used by the single product. Thus, it is still unknown how KIPO will determine relevancy in a diverse range of products embodying multiple technologies.

Sung Soo Hwang, Man-Kum Lee and Linda A Parks, Kim & Chang, Seoul

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