Hello, this is IPLEX IP Law Firm.
People considering a patent application often ask:
Is it not registered immediately?I heard the procedure was complicated, how exactly does it work?
Filing alone does not establish a patent right. The process involves application, examination and registration.
Today, we’re going to make it easy for business owners to align the entire process of patenting with the actual work stage.
1. Patent application: The beginning of securing rights
All procedures begin with the application.
Filing involves submitting a specification describing the invention and its claims to the patent office to seek patent protection.
The key points at this stage are:
- Securing the filing date
- Depending on the patent specification, the scope of future rights is determined.
- Establishing the starting point for later procedural deadlines
In other words, filing is not just a filing, it is the most important step in designing the structure of rights.
2. Publication: When the technical information becomes public
The application is normally published after the statutory period, making its technical disclosure available to the public.
- Generally 18 months from filing or the earliest claimed priority date
- Anyone can read the technical content.
Publication allows third parties to read the technical disclosure and can be relevant to subsequent legal proceedings.
3. Request for examination: Starting substantive review
Filing alone does not trigger substantive examination. A separate request for examination is required.
For current Korean applications, failure to request examination within three years from the filing date generally results in the application being deemed withdrawn.
The examination request is therefore a separate, essential step. Filing an application without tracking this deadline can lead to loss of the opportunity to obtain a patent.
4. Examination: Determining patentability
A patent examiner assesses whether the invention and application meet the legal requirements.
The examination considers matters such as:
- Novelty (New Technology)
- Inventive step (progressive compared to existing technology)
- Industrial applicability
If a problem is detected during this process, the grounds for refusal will be sent.
What is an office action?
It’s easy to say, “It’s hard to register at this point.”
This includes the following:
- Prior art relevant to patentability
- Inventive steps are insufficient.
- Defects in the specification or other application requirements
One or more office actions may be issued during examination before the application is allowed or finally refused.
An office action is not a final refusal. It is part of the exchange of reasoned arguments with the examiner, through which the scope of the claims and the prospects for registration become clearer.
Why is the response strategy important?
The results vary greatly in terms of office actions.
- A well-supported response may lead to allowance.
- Failure to resolve the objections may lead to a final refusal.
In particular, it is not a simple rebuttal to office actions, but a strategic response, such as a patent specification correction strategy, adjustment of rights scope, and constructing a differentiating logic with prior art.
If a response does not resolve the examiner's grounds for refusal, a refusal decision may follow. The application will not proceed to registration unless the refusal is successfully addressed through an available procedure.
Further options may include a request for re-examination or an appeal, subject to the applicable requirements and deadlines.
- Requesting re-examination or appealing the refusal
- Review the re-applying strategy
These procedures require additional time and cost, so a strong response during initial examination is valuable.
5. Registration decision and final registration: completion of rights
If the examination objections are resolved, the office issues a decision to grant a patent. Registration still requires completion of the final formalities.
After you receive your registration decision, you must pay the registration fee within the specified time period before the patent is officially registered.
Patent rights arise upon registration, after the required fees and formalities are completed. The owner can then enforce the registered right against infringement.
A key point for business owners to know.
The most important part of the patent process is simple.
- Filing is only the beginning. Examination responses, deadlines, and registration formalities all need to be managed.
- Avoid procedural mistakes: Careful deadline management is essential to avoid losing your rights by making minor mistakes, such as missing review claims or unpaid registration fees.
- Design with an expert: The review process is not just a review, it’s a ‘negotiation’. To increase the strength of rights, a sophisticated response strategy must be followed.
A patent is not simply a “procedure that ends when you apply,” but rather a structure of rights that is completed in several steps. In particular, depending on the response during the screening process, it may vary not only the registration but also the strength of the rights.
If your application is currently being prepared or is already in progress, we recommend that you check to see if each step is working properly and if there is a strategy that can lead to registration.
This article reflects the information available when it was published. Contact us to discuss your circumstances.