[Venture Mentoring] Accelerated Patent Examination: What Every Startup CEO Must Know

For an early-stage startup, whether it holds patents matters in many respects, including marketing, use of government support programs and attracting investment. Under ordinary examination, however, a patent is registered in about two years at the earliest, and sometimes takes more than three years, which is a real limitation. For startups, therefore, using the accelerated examination system, which can lead to registration within about a year, is essential.

What is accelerated examination?

Accelerated examination is a system under which KIPO examines an application especially quickly when certain requirements are met. Under Article 61 of the Patent Act, an applicant may file a request for accelerated examination (i) where a third party is working the claimed invention after the application has been published, or (ii) where the application is one prescribed by Presidential Decree as requiring urgent processing.

Because a patent application is published one year and six months after filing, the grounds for accelerated examination that a startup can actually use are those satisfying requirement (ii) above. The 16 categories eligible for accelerated examination under requirement (ii) are set out in Article 9 of the Enforcement Decree of the Patent Act. The most commonly used ones are explained below.

Patent applications by venture companies

A company certified as a venture company under Article 25 of the Act on Special Measures for the Promotion of Venture Businesses may request accelerated examination of its patent applications. If a company holds a venture company certificate, requesting accelerated examination on that basis is the simplest route.

Patent applications for inventions the applicant is working or preparing to work

Where the applicant is working, or preparing to work, the claimed invention, the applicant may request accelerated examination. Since startups often file patent applications for items they have actually commercialized or are preparing to commercialize, this ground is mainly used by companies that are not venture companies.

When requesting accelerated examination on this ground, the applicant must submit supporting documents, such as photos of prototypes or commercial products, samples, catalogs, user manuals, transaction statements, delivery confirmations, supply contracts, factory registration certificates and business registration certificates. Note, however, that if the invention was publicly worked or prepared for working before the patent application was filed, the invention was disclosed before filing and has lost novelty, so no patent can be obtained at all.

Patent applications by individuals aged 65 or older

If the applicant is 65 or older, the applicant may request accelerated examination. Therefore, if a startup is a sole proprietorship and its CEO is 65 or older, accelerated examination can be requested without meeting any other requirement. Many applicants fail to use this ground even though it is available, so it is worth keeping in mind.

Patent applications for which a prior art search has been commissioned from a specialized institution

If, after filing, the applicant commissions a prior art search from a specialized institution designated by KIPO, the applicant may request accelerated examination. This ground requires paying a separate search fee, but because accelerated examination can then be requested without any other requirement, it is widely used when none of the other grounds above can be met.

Note, however, that as shown in the notice above, KIPO recently announced that, for requests for accelerated examination filed on this ground on or after June 23, 2021, the deadline for starting accelerated examination is extended from four months to eight months. KIPO cited fairness with the other grounds and the sharp increase in requests filed on this ground as its reasons.

Accordingly, where accelerated examination is requested after commissioning a prior art search from a specialized search institution, the first notice of preliminary rejection may be issued as late as about eight months after the request, so obtaining registration within one year is expected to become practically difficult. It is therefore advisable to check carefully whether accelerated examination is available on another ground and to use this ground only when no other ground applies; this will help in obtaining a patent quickly.

Other grounds for accelerated examination

Other grounds for accelerated examination include patent applications in the defense industry; patent applications related to green technologies that minimize emissions of greenhouse gases and pollutants; patent applications related to the Fourth Industrial Revolution, such as AI or IoT; patent applications related to export promotion; patent applications relating to the duties of the state or local governments; patent applications by technology-innovative SMEs; patent applications by companies recognized as excellent in employee invention compensation; patent applications by SMEs certified for IP management; patent applications relating to the results of national R&D projects; patent applications serving as the basis for a priority claim under a treaty; and international patent applications for which KIPO performed the international search as an International Searching Authority.

With the recent growth in startups in the artificial intelligence (AI) field, and with energy-saving technologies becoming more important as ESG management is strengthened, startups in these fields should also note that they can request accelerated examination on these grounds when filing patent applications.

Strategies for using accelerated patent examination

For early-stage startups, requesting accelerated examination is almost essential. To obtain registration as quickly as possible...