CHANG TSI
Insights
In the global stage of patent portfolio planning, South Korea and China have always been important destinations for patent applications. The invention patent examination systems of the two countries are similar in their macro framework, but upon close examination, there are non-negligible differences in key timelines and specific procedures.
In particular, for applicants accustomed to the examination rhythm in China, the procedural arrangements in South Korea upon receiving a Final Rejection contain certain “unconventional” elements that, if not well understood, may affect strategic planning and grant opportunities.
In South Korea, after the submission of an invention patent application, the applicant must file a request for substantive examination with the Korean Intellectual Property Office (KIPO) within three years from the filing date or the priority date; otherwise, the application will be deemed withdrawn.
This is similar to Chinese practice, where an applicant must also request examination within three years from the filing date.
Differentiation Note: Although the “three-year period” rule is identical, South Korea typically commences examination more quickly upon receiving the request, whereas in China the queuing time may be longer, especially in hot technical fields.
In South Korea, after completing the prior art search and preliminary examination, the examiner issues a first office action detailing any technical or legal issues with the claims. In South Korea, the applicant must respond within two months from the date of issuance, with extensions being quite limited: a first extension for one month, and in exceptional cases, a total extension not exceeding four months.
Chinese counterpart: In China, the response period to the first OA is four months, extendable to six months at maximum.
Differentiation Note: South Korea’s initial response period is significantly shorter than in China, and extension conditions are stricter. For cross-border filings, once a South Korean OA is received, technical, legal, and translation teams must act promptly to avoid losing the opportunity to amend and reply due to insufficient time.
In South Korea, after receiving the response to the first OA, the examiner will conduct another examination of the application. If the issues remain unresolved, a second OA may be issued; however, it is more common for a Final Rejection to be issued directly.
According to the South Korean Patent Act and Examination Guidelines, from the date of issuance of a Final Rejection, an applicant has two options:
(1) Request for Re-examination with Amendment
The amended documents are re-examined by the original examiner.
If, after re-examination, the application is still rejected (Second Decision of Rejection / Rejection Decision after Re-examination), the applicant may appeal to the Intellectual Property Trial and Appeal Board (IPTAB).
(2) Notice of Appeal without Amendment
The applicant may directly appeal to the IPTAB without making amendments; however, this route may cause the applicant to lose the opportunity to file a divisional application in the case at hand.
Chinese counterpart: In China, after receiving a rejection decision, the applicant has three months to request re-examination with the Reexamination Department of the CNIPA. The re-examination is handled by an examiner and/or panel different from the substantive examiner. At the time of requesting re-examination, Chinese applicants need not immediately amend claims; they may only submit the request and arguments, and can later amend after receiving the re-examination notification.
Differentiation Note: In South Korea, amendments and arguments in re-examination must be submitted together within the deadline, and the original examiner conducts the review, causing greater time pressure. In China, the procedure is more flexible, allowing staged adjustments.
In South Korea, if a direct appeal is filed after a Final Rejection without undergoing re-examination, and the IPTAB upholds the rejection, the applicant will lose the right to file a divisional application. South Korea has no continuation system similar to that in the U.S., once the timing is missed, it is no longer possible to file on the same technical solution.
In China, a divisional application may be filed at multiple stages before the application proceeds to grant, including during substantive examination and re-examination. In addition, after receiving the notice of allowance, a divisional application may still be filed within two months, provided that the original application remains in a pending status.
Differentiation Note: The window for divisionals in South Korea is much narrower. Especially at the Final Rejection stage, strategic decisions must be made early, and if a direct appeal is chosen, it is advisable to file the divisional simultaneously to avoid losing opportunities.
In South Korea, if re-examination still results in rejection or the applicant directly appealed, the case proceeds to IPTAB review.
Chinese counterpart: In China, if re-examination upholds the rejection, the applicant may further file an administrative action with the Beijing IP Court.
Differentiation Note: South Korea’s IPTAB process is administrative litigation in nature, with a compact schedule and direct linkage to court litigation. In China, judicial review and re-examination are clearly separated processes.
(1) Effective time management: The response deadlines for a South Korean OA and Final Rejection are shorter compared to the examination process in China; therefore, advance planning is essential.
(2) Prudent path selection: In South Korea, directly appealing after a Final Rejection may result in the loss of the opportunity to file a divisional application; commercial strategy should be considered comprehensively.
(3) High-quality one-time re-examination statement: In South Korea, re-examination is conducted by the original examiner. Amendments and arguments must be submitted simultaneously, ensuring that technical and legal reasoning are equally emphasized.
(4) Parallel filing strategy: When filing in multiple jurisdictions in parallel, align key timelines to avoid omissions and risks caused by differences in procedural systems.
