Patent law amendment: extension of safe harbour grace period for novelty

On 15th March a free trade agreement (FTA) between Korea and the United States came into effect. As a precursor to implementation of the agreement, the Patent Act was amended in order to align Korean patent law with international standards. A significant amendment is the extension of the grace period for preserving the novelty of an invention from six months to one year.

Novelty and safe harbour provisions
Article 29(1) of the Patent Act provides that an invention lacks novelty if: 

• It was well known or publicly used in Korea or abroad before the filing date of a patent application.
• It was described in a publication distributed in Korea or abroad or was publicly disclosed through telecommunication platforms before the filing date of a patent application.

This section of the Patent Act designates Korea as a first-to-file or absolute novelty country and remains unaffected by the FTA. In other words, under the act, an invention cannot be patented if it was publicly disclosed (anywhere in the world) before the filing of a patent application. However, disclosure of an invention is sometimes necessary, and a "safe harbour" for preserving novelty exists in order to protect an applicant from losing novelty for its own prior disclosure of an invention.

The safe harbour provision of the Patent Act previously provided only a six-month grace period. Many argued that this grace period, which was relatively short compared to the one-year grace period provided for in other countries (including the United States), was not long enough to evaluate sufficiently market value, patentability or other factors crucial to deciding whether to file a patent application. Recognising these concerns and the need to harmonise Korean patent law with that of other jurisdictions, Korea extended the safe harbour provision to allow a one-year grace period for preserving novelty, as set forth in the Korea-US FTA.

The amended Article 30(1) of the Patent Act provides that an applicant can preserve the novelty of its invention, notwithstanding Article 29(1), if it files a patent application within 12 months from the date that the novelty was destroyed under Article 29(1), and either of the following occurs: 

• If a party with the right to obtain a patent has caused the invention to fall under Article 29(1) (except for a laid-open publication or patent registration publication in or outside Korea under a treaty or law).
• If, contrary to the intention of a party with the right to obtain a patent, the invention falls under Article 29(1).

The amendment extends the grace period only from six months to 12 months; all other terms remain the same.

Safe harbour requirements and procedure
Other than the extension of the grace period to preserve the novelty of an invention notwithstanding the novelty-destroying circumstances described in Article 29(1), the standards for satisfying the safe harbour provision and the procedure for invoking the benefits of the safe harbour provision have not changed.

All disclosures by a party with the right to obtain a patent, or disclosures made contrary to the intention of a party with the right to obtain a patent, qualify for safe harbour under Article 30(1) of the Patent Act. In other words, the right to claim safe harbour is broad and is granted as a matter of right, provided that the formalities are met.

In order to invoke the benefits of the safe harbour provision, a prospective applicant must submit a written statement to the Korean Intellectual Property Office commissioner stating its intention to do so when filing a patent application.

If there was a voluntary novelty-destroying circumstance, the prospective applicant must also submit supporting evidence relating to the circumstance within 30 days of filing a patent application. If an involuntary novelty-destroying event occurs, a party claiming safe harbour has the burden of proving that it occurred against his or her intention (Supreme Court Case 85hu14, 24th December 1985).

For applications entering the Korean national phase based on a Patent Cooperation Treaty application, the statement and supporting documents must be submitted to the commissioner within 30 days of filing the request for examination in Korea, or within 30 days after the deadline for entering the Korean national phase (31 months from the earliest filing date in a Paris Convention country), whichever is earlier (Article 200).