[Law Amendment] Deadlines for Appeals Against Final Rejection and Requests for Reexamination Extended to 3 Months (Effective 2022.04.20)

The amended Patent Act took effect on April 20, 2022, and the changes call for attention in practice.

First and foremost, the deadline for filing an appeal against final rejection and the deadline for requesting reexamination, previously 30 days, are extended to 3 months.

The 30-day period was relatively short compared with the two-month deadline for responding to a notice of preliminary rejection during examination. There was often not enough time to review response options, so applicants frequently requested extensions, which cost them extension fees and added unnecessary administrative work for KIPO.

The 3-month period for appeals against final rejection applies to cases in which a certified copy of the final rejection is served on or after the effective date of the amended law (2022.04.20).

The 3-month period for requests for reexamination applies to cases in which a certified copy of the final rejection or the decision to grant is served on or after the effective date of the amended law (2022.04.20).

Notably, reexamination can be requested even after a decision to grant. This has long been possible for purposes such as correcting obvious errors in the specification after a decision to grant, but it is not often used in practice.

Generally, when a first final rejection is issued, the applicant has two options: request reexamination or file an appeal against final rejection.

Unless the claims cannot reasonably be narrowed any further, it is common to request reexamination while narrowing the claims. If a final rejection is issued after reexamination, the applicant has no choice but to file an appeal against final rejection.

In practice, since the response deadline is now 3 months whether the final rejection is the first one or one issued after reexamination, applicants should have more time to review their response options.

LNB IP Law Firm