Understanding Priority Examination in Patent Applications

The patent examination process can be lengthy, often taking up to 18 months on average, and in some cases extending to three years. This delay can be burdensome for inventors and applicants who wish to protect their inventions swiftly. Without a patent, inventors may find it challenging to secure their technology from competitors during this waiting period. To address this, the Korean Intellectual Property Office (KIPO) offers a "priority examination" system, which expedites the examination process for certain eligible applications.

What is Priority Examination?

The priority examination system allows certain patents or utility models meeting specific criteria to be reviewed ahead of others. While patent applications are generally examined in the order that examination is requested, priority examination helps expedite the review for inventions deemed essential or urgent. This system is designed to prioritize the protection of technologies that fulfill public interest or critical industry needs.

Why Priority Examination is Necessary

Patent applications are typically processed in the order that examination is requested. However, this order may not consider the social or economic urgency of some inventions. For example, green technology, defense-related innovations, or innovative technologies from small to medium-sized enterprises (SMEs) may not be adequately protected if they face prolonged examination wait times. Priority examination offers a solution by moving such inventions to the front of the line, allowing inventors to secure patent rights more quickly and reduce the waiting period for legal protection.

Differences Between Standard and Priority Examination

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In Korea, the typical time from a patent application’s examination request to its initiation averages 18 months. However, applications under priority examination see this timeline shortened significantly, often between two to five months, saving applicants over a year in processing time.

• Standard Applications: Average wait time of 18 months from examination request to initiation.
• Priority Applications: Average wait time of five months from priority approval to initiation.

According to 2023 KIPO data, the average time from application filing to patent registration was 26 months for standard applications, but only six months for those under priority examination.

Eligibility Criteria for Priority Examination

Applications eligible for priority examination must meet specific requirements:

• Examination Request: An examination request must be made before applying for priority examination. Applicants can simultaneously request both examination and priority examination at the time of filing.
• Claim Scope: The invention must be specified within the claim scope for priority examination eligibility. Applications with inventions only in the description are ineligible.
• Eligible Inventions: Priority examination may be granted to technologies that contribute to the public interest, are urgent for commercialization, or are already in use by third parties. Examples include green technology, defense-related inventions, and export-promotion technologies.

Priority Examination Process

To request priority examination, applicants must submit the necessary documents, including a priority examination request form with specific reasoning and supporting evidence. Additionally, a fee is required, and in cases where the request is dismissed, a partial refund may be issued.

Applications already under examination may also apply for priority examination if faster processing is desired.

Key Categories Eligible for Priority Examination

Priority examination is primarily available for the following cases:

• Third-Party Use: If the invention is already being used by a third party, priority examination can be requested after publication. For immediate review, applicants may also request early disclosure.
• Green Technology: Energy-efficient or renewable energy technologies may qualify if they align with KIPO's priority examination list.
• Venture or Innovative SMEs: Verified venture companies and innovative SMEs can apply for priority examination, provided the invention is relevant to their industry.
• Export Promotion: Inventions in the process of international standardization or adopted as an international standard may also qualify.

Cost of Priority Examination

Priority examination incurs additional fees. KIPO charges approximately 200,000 KRW for patents and 100,000 KRW for utility models. Applicants should also consider the cost of prior art search services, often performed by patent agents. In cases where the request is dismissed or withdrawn, a partial refund may be available.

Conclusion

Priority examination offers applicants a valuable tool for securing patent rights more swiftly. While it is advantageous, not all inventions are eligible, and additional costs apply. A thorough understanding of the eligibility criteria and careful preparation of the required documentation are crucial to a successful application.

For more information or assistance with priority examination and patent applications, feel free to reach out to Fine Patent Law Office. Our patent attorneys are dedicated to helping you protect your inventions as efficiently as possible.

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