[Korean IP info]Fast Patent Acquisition Strategy: Essential Checkpoints for Filing for Expedited Examination

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What is an Expedited Examination?


Expedited examination is a system that prioritizes the examination of a patent with specific requirements over other patents. Considering that it takes approximately 1 year and 6 months to receive patent registration without filing for expedited examination, companies seeking patent registration can significantly reduce the time it takes to obtain a patent through the expedited examination system.

While many companies understand the expedited examination system as a mechanism that reduces the time required for patent registration, even companies with experience in filing expedited examination requests through a patent office often lack knowledge about the details of the system.


Some may question whether it is necessary for patent personnel within a company to understand the details of the expedited examination system. However, in my opinion, for strategic decision-making within a company, patent personnel should have a grasp of at least the basics. Here, I will explain the details of the expedited examination system that are necessary for patent personnel within a company.


1. Effect of filing an expedited examination request: Shortened examination initiation period


When an expedited examination request is filed, the period it takes for an examiner to initiate the examination is shortened. Specifically, in most cases, the initial examination results can be obtained within 4 months after the expedited examination is approved, significantly reducing the time to patent registration. However, filing an expedited examination request only shortens the time it takes to initiate the examination, and the subsequent stages are the same as when an expedited examination request is not filed.


On the other hand, if a prior art search is commissioned to a specialized agency among the requirements set by the patent office and an expedited examination request is filed, the initial examination results can be obtained within 8 months after the expedited examination is approved. Therefore, it is necessary to assess the effects of shortening the examination period according to the requirements applicable to the patent applicant before deciding whether to file an expedited examination request.



2. Side effect of filing an expedited examination request: Faster patent publication


Patents are published to the public either 18 months after the filing date or upon registration. However, since registration often occurs 18 months or more after the filing date, the content of the patent is not generally disclosed until at least 18 months have passed since the filing date. In other words, the period from the filing date to 18 months is a non-publication period during which companies can advantageously utilize the patent.


However, filing an expedited examination request can lead to registration before the 18-month period, resulting in the early disclosure of the patent content. Therefore, when considering filing an expedited examination request, companies need to take into account the possibility of faster patent publication.



3. Timing of filing an expedited examination request: Possible at any time after filing the examination request


An expedited examination request can be filed at any time after filing a patent application and requesting examination. It is not limited to when the patent is initially filed, but can also be done after a certain period of time has passed since the filing.


Therefore, if there is a need for a company to receive a completed patent application quickly, it can strategically consider filing an expedited examination request.



4. Requirements for filing an expedited examination request: Specific conditions must be met


Only when meeting the requirements set by the Korean Intellectual Property Office (KIPO) can you apply for expedited examination. There are various reasons for requesting expedited examination, with the main ones being if a company is conducting business or preparing for business based on a patented invention, or if the company has been recognized as a venture enterprise.


However, the reasons for expedited examination are gradually expanding, and recently, even if a company has obtained a new patent classification related to the Fourth Industrial Revolution, such as artificial intelligence, the Internet of Things, 3D printing, autonomous vehicles, or big data, they can apply for expedited examination.


Furthermore, even if a company does not fall under the aforementioned reasons, the system has been changed to allow expedited examination if the company commissions a prior art search to a specialized institution. Therefore, currently, it is possible for companies to apply for expedited examination if they wish.



5. Cost reduction for expedited examination: 70% reduction in examination fee for startups


If a small and medium-sized enterprise within three years of establishment applies for expedited examination, they are eligible for a 70% reduction in the examination fee, regardless of the reason for expedited examination.


When considering a patent strategy, it is not always advantageous to receive patent registration quickly. However, in cases where a company needs to obtain a patent quickly, utilizing the aforementioned expedited examination system can shorten the time to patent registration. Patent firm BLT proposes suitable systems according to the company's situation, so when considering options to efficiently protect your valuable ideas, we hope BLT will be a good choice.


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Jeonghan Uhm (Patent Attorney)

Shawn@BLT.kr 


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Head Office 1F, 25, Beobwon-ro 3-gil, Seocho-gu, Seoul, 06595 Republic of Korea

Tel : +82-2-514-0104     Fax : +82-70-4855-0102     E : info@blt.kr

Incheon Office 26F, 165, Convensia-daero (POSCO Tower Building), Yeonsu-gu, Incheon (Stage9 Songdo POSCO Tower)

Tel : +82-32-710-5104     Fax : +82-70-4855-0102     Email : info@blt.kr


ⓒ 2023. BLT Patent & Law Firm All Rights Reserved.