Requirements and Procedures when a foreign applicant claims 12-months Grace Period in Korea

Based on 12 months grace period under the Korean patent law, an inventor or his assignee may obtain a patent through filing an application for any already disclosed invention within 12 months from the date of novelty destroying event. The disclosure of an invention as novelty destroying event might be done by an inventor, his assignee or a 3rd party. In order obtain such benefit of grace period under the Korean patent law, a foreign applicant must meet substantive and procedural requirements as follows:

1. Priority claim under the Paris Convention or PCT may not apply beyond 12 months from the first disclosure.

For example, an inventor disclosed his invention on October 1, 2013 and filed a patent application with claiming benefit of grace period on December 1, 2013 at USPTO. Later, the applicant filed a Korean patent application based on the US patent application with priority claim under the Paris Convention on December 1, 2014. The applicant may not obtain a patent in Korea because the disclosure of the invention on October 1, 2013 shall destroy the novelty of the invention filed at KIPO. Because an applicant did not file the application within 12 months from the first event of invention disclosure, he may not claim benefit of 12 months grace period. Accordingly the priority claim under the Paris Convention cannot save the lost of novelty.

Therefore, a foreign applicant must file a Korean patent application at KIPO with 12 months from the first disclosure event regardless of claiming priority under the Paris Convention or PCT. Otherwise, a foreign applicant will lose an chance to obtain a patent in Korea under 12 months grace period.

2. An applicant must disclose all and each event of invention disclosures when files a patent application at KIPO

When an inventor had disclosed his invention several times before he has filed a patent application before KIPO, the applicant must disclose all of them and request benefits of 12 months grace period for all and each events of invention disclosures. Otherwise, the unreported event may be a basis to deny the novelty of the filed invention.

For example, (1) an inventor disclosed an abstract about his invention in a brochure of a conference on October 1, 2013 and (2) gave a detailed presentation about his invention before audience in the conference on October 10, 2013 and then (3) published his article about the invention on November 1, 2013 and further (4) the organizer of the conference uploaded the inventor's presentation at an official website of the conference on November 10, 2013.

In order to be safe based on benefits of grace period under the Korean patent law, an inventor must disclose all of the above 4 events and claims benefits of 12 months grace period for all of them when he files a patent application at KIPO within October 1, 2014. For example, if an applicant did not report No. 4 event of posting his presentation at the conference website, it may be a basis for denying novelty of the invention. However, in my view, it may be possible to argue that the inventor could not know the event and did not have any intent to deceive KIPO. Accordingly an applicant may probably overcome such a hurdle but it is better to check all possible events of disclosures and report all and each of them to KIPO. On the other hand, in case an applicant did not disclose No. 2 event or No. 3 event, he cannot save his application from loss of novelty by his disclosing the invention before the filing date.

12 Months Grace Period in Korea

Article 30 of the Korean Patent Act provides 12 months grace period for disclosed inventions. In inventor or his assignee may obtain a patent through filing an application for the disclosed invention within 12 months from the date of novelty destroying event.

The disclosure of an invention as novelty destroying event might be done by an inventor, his assignee or a 3rd party. If an inventor or his assignee disclosed the invention, they may obtain a patent under the grace period scheme. However, in case the invention was disclosed through patent publications such as A1 publication or B1 publication in any country which was filed by an inventor or his assignee, the grace period may not be applied and thus the applicant finally lost an opportunity to obtain a patent in Korea. Therefore, patent specification publications are critical exceptions to grace period under then Korean patent law.

In other hand, where a 3rd party disclosed the invention without permission of an inventor or his assignee, an inventor or his assignee may file an application for the disclosed invention within 12 months from the date of disclosure. An applicant must prove that the invention was disclosed by a 3rd party against his intention.

An applicant must submit a written document claiming grace period benefit to KIPO when filing a patent application. Further, within 30 days from the filing date, an applicant must submit evidence supporting his claims to the novelty destroying event.