Patent to utility model, and back.

Both directions

A patent application can be converted to a utility model application, and a utility model application to a patent application, within what was disclosed in the description and drawings as originally filed.

The time limit

Conversion is possible until three months after the first refusal decision is received. If the appeal period is extended, the conversion period follows it. An application filed in English can be converted only once its Korean translation has been filed.

Effects

• The converted application keeps the filing date of the original application.
• The original application is deemed withdrawn.
• Certified copies of priority documents can be filed within three months of the conversion, even if the original period has passed.

Why convert

• Patent to utility model: utility models are cheaper to maintain and are a fallback for structural inventions; the term is 10 years from filing.
• Utility model to patent: a patent lasts 20 years from filing and also covers methods and compositions.

Whether a conversion helps depends on the claims and the cited prior art; we advise on it when we report a refusal. See also utility model or patent in Korea.

PCT applications

A PCT application that entered Korea as a utility model can be converted to a patent application once the national phase fee has been paid and the Korean translation filed.

Questions

Legal basis

• Patent Act, Art. 53 — utility model to patent: time limit, filing date, deemed withdrawal, priority documents (para. 6)
• Utility Model Act, Art. 10 — patent to utility model
• Patent Act, Art. 209 — conversion of international applications
• Patent Act, Art. 88, Utility Model Act, Art. 22 — terms of 20 and 10 years