The Korean Patent Act and the Korean Utility Model Act were revised in May 2011, making it mandatory for patent or utility model applications to disclose information on prior art related to the invention.
Up until 01 July 2011, when filing a patent application at the Korean Intellectual Property Office, there has been no requirement to disclose information on prior art related to the invention in the patent specification. Nevertheless, it had been customary under Korean patent practice to describe background art in the specification, and the lack of such disclosure can often be regarded as failure to provide adequate information and fulfill the description requirements for the specification.
As of 01 July 2011, an application filed on or after this date at the Korean Intellectual Property Office is required to disclose information on prior art related to the invention in the patent specification. The same also applies when filing for a Korean Utility Model on or after the same date. Failure to meet this requirement will result in the application being rejected during the examination stage.
The Korean Patent Act has been revised and requires that “the specification must describe ‘background art of the invention’”. Furthermore, to meet this requirement the prior art disclosed must relate to the invention as disclosed in the claims. The disclosure may include references to specific prior art documents, such as the publication number of a patent, or in the case of other publication, an author, title, publisher or date.
According to the Examination Guidelines of the revised Korean Patent Act, there is no requirement to detail or describe the content of any cited prior art. It is sufficient to only reference prior art documents providing the cited prior art documents contain adequate background information related to the invention.
Nevertheless, when referencing prior art, it is advisable to include a brief description of the cited documents. In cases where the invention is related to an entirely new inventive concept and as such no related prior art is available, background art related to the main technical feature of the invention may be mentioned.
For any application filed on and after 01 July 2011, objection will be raised if the patent specification does not disclose any prior art related to the invention. The applicant can address the objection by filing amendments and adding relevant prior art information to the specification. However, care should be taken as to not introduce added matter, which is impermissible, to the application.
Applications filed before 01 July 2011 will not be affected by this recent change. Furthermore, failure to reference relevant prior art in the patent specification does not constitute a ground for invalidation after grant of the patent.
