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“A checklist for the ‘provisional application’, 1 year after introduction of the US-only system in Korea!"

26 Dec 2022
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The provisional application system which was introduced in March 2020… the same level as the US provisional application


In December 2020, Hit News editorial (“loose-lipped”…an easy way to lose patent rights, 'self-announcement'), proposed making use of “temporary specification submission system” of Korea (hereinafter referred to as the “Korean temporary application system”) or the US “provisional application system while dealing with the risks of disclosing inventions before an application was filed.


In fact, many companies in Korea are using the US provisional application system to secure earlier filing date. Even among the patents which I have mentioned all this while in the Hit News editorial, Yuhan’s patent for lazertinib (EGFR inhibitor), the 31st new drug in Korea, and Toolgen’s CRISPR/Cas9 (gene scissors) patent, etc. have secured their priority date by use of the US provisional application system.


On the other hand, the Korean temporary application system has been enforced from March 30, 2020, and about a year has elapsed just now. However, it often feels that the existence of such system or how to use it is not well publicized and the need to inform the relevant industry of it seems required. Therefore, I would like to talk about what the Korean temporary application system is, how to use it, and what to pay attention to from the perspective of patent practicians in the pharmaceutical/bio fields.


In the past, the US provisional application system was the only option.


Under normal circumstances (especially in the pharmaceutical/bio fields), it is practically impossible to complete an application by preparing a completed specification on the very day of application request. In addition, before the introduction of Korean temporary application system, it was also impossible to file an application for unprocessed invention data (e.g. paper manuscript, poster materials of academic society, research notes, etc.) as they are due to formal and procedural limitations, and the filing date had to be delayed as much as the time required for the preparation of specification.


The United States has been implementing the provisional application system since 1995. The above system has merits as follows: ① it is procedurally simple as it does not require the submission of an inventor’s declaration and IDS; ② patent fees are low; ③ restrictions on formal requirements of specification are loosened, for example the scope of patent claim does not need to be described; ④ a basic application for priority claim can be filed as the filing date is acknowledged; and ⑤ there is no language restriction.


That is to say, in the US provisional application system, an application can be filed quickly because the procedural and formal requirements are loosened as above. For example, it is possible to file an application with the invention data provided without further processing even on the very day of requesting the application. Therefore, not only US companies but also Korean companies have been using the US provisional application system habitually for the purpose of securing earlier filing date.


Korea's temporary application system emerged as an alternative


To ensure that early filing date can be preoccupied as in the US provisional application system, 'delayed submission of scope of claims’ was first introduced in Korea in 2007. It is a system which allows the application itself to be accepted even if the scope of claim is not described in the specification, but other procedural and formal requirements were not loosened except for allowing the delayed submission of scope of claims. In addition, in 2015, a 'foreign language application system' was introduced, which allows the applicant to prepare and file a specification in English, but this also had difficulty in a quick filing because the procedural and formal requirements were not loosened except for allowing the specification prepared in English to be accepted.


However, the temporary application system introduced in March 2020 considerably loosened these procedural and formal requirements, and in most cases, it became possible to file an application even if the data received from the applicant are submitted as they are. There are no formal restrictions on the items which make up the contents of specification, and the file format to be submitted is admitted in various ways including Hangul, Word, pdf, ppt, and other image files. It became possible also in Korea to quickly and easily secure the filing date practically at the same level as that of the US provisional application system.


Considering the cost and procedural accessibility, it is thought that the actual benefit of using the US provisional application system for domestic companies to secure a faster filing date has decreased considerably. According to the Korean Intellectual Property Office (KIPO), from the enforcement of the system to the second half of 2020, 2,534 cases of temporary application in total were filed with an average of 360 cases per month. The system is expected to be used more actively in the future.


However, there are still remain some things to beware of.


The current Korean temporary application system is not an independently established system, but it can be seen as a system in which only specification requirements are loosened while using the existing systems of delayed submission of scope of claims and foreign language application. Therefore, it is required to describe the omitted claims or, in the case of an application in English, submit a translation in Korean within one year and two months from the filing date of temporary application (or three months from a third-party’s request for deliberation), otherwise the application will be considered as withdrawn.


However, if seen from the essential point of temporary application, most of the applications are filed with an incomplete specification, so actual benefit in making amendment to add a claim to the temporary specification or submitting a translation in Korean is not much. Instead, in practice, a completed specification is prepared within one year from the filing date of the temporary application and the application for priority claim in Korea is filed. Therefore, points to beware of when filing a temporary application will be discussed on the premise that an application for priority claim is filed as a follow-up procedure.


① Practicians should always beware of making mistakes.


Because most of the temporary applications are filed hastily, the possibility of making mistakes is very high. Such examples can be seen in the case that the applicant delivers wrong data while making a hasty request to the patent office, or in the case where the application language is designated as Korean although the provisional specification is in English. It is important to recognize that mistakes are very likely to occur and work with a calm attitude at all times.


② It should always be taken into consideration whether it is an incomplete invention, whether a priority can be admitted, and to what extent it can be admitted.


It is a legal principle established in judicial precedents of the Supreme Court in Korea that the status of a prior application is not acknowledged for an incomplete invention. Therefore, (although there is no explicit judicial precedent), if a temporary application is filed with an incomplete invention, there is a high probability that a priority will not be acknowledged when a subsequent application for priority is filed (that is, retroactive effect may not be acknowledged as of the filing date of temporary application). Therefore, it is desirable to include the minimum data required in the field to which each invention belongs to ensure that a temporarily applied invention may not become an incomplete invention. For example, in the case of a synthetic drug, it is necessary to consider including at least the specific manufacturing method and confirmation data (NMR, MS, etc.) of substance, and in the case of a use invention for pharmaceutical, it is necessary to consider including at least in-vitro experimental data which can confirm the pharmacological effect.


On the other hand, regarding the scope of priority acknowledgement, the Supreme Court believes the following matters to be included in the scope: i) the matters 'explicitly described' in the specification of prior application; or ii) the matters which a person skilled in the art can understand in 'the same as what is described' in the specification of prior application. Therefore, it should be noted that even if an application for priority claim is filed with the completed specification after the temporary application, the retroactive effect as of the judgment is not acknowledged for all inventions.


In summary, it is desirable for the applicant to surely take into consideration the scope of invention for which a priority is to be acknowledged and the minimum level of experimental data required to be acknowledged and determine the date of filing an application unless it is unavoidable to file a temporary application before publication due to a situation in which the invention must be published.


③ A strategy should be established in consideration of the duration.


An application for priority claim must be filed within one year from the filing date of the first temporary application, and if a patent is finally registered, the duration is up to 20 years from the filing date of priority claim. From another point of view, it also means that the earlier the temporary application is filed, the earlier the duration of patent right will expire. In the pharmaceutical/bio fields, the sales generally increase characteristically as getting closer to the expiration of duration, so an early filing is not always the right answer. Therefore, when determining the time for a temporary application, it is recommended to also consider a commercialization plan (e.g., a clinical plan to obtain approval for a drug, scheduled product release date).

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