Korea Adopts ‘European-Style’ Background Art Disclosure Rules

Revisions to the (South) Korean Patent Act, effective from 1 July 2011, now require an applicant for a patent to disclose information on prior art related to the invention in the specification.

As we understand it, this is a requirement similar to that which exists in Europe, whereby the description should ‘indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art’ (Implementing Regulations to the Convention on the Grant of European Patents, Rule 42(1)(b)).

As reported here by YOU ME Patent & Law Firm, revised Article 42, paragraph 3 of the Korean Patent Act requires, for any application filed on or after 1 July 2011, that ‘the specification must describe background technology of the invention.’

While failure to describe background art will provide a ground for rejection during examination, it is not a ground for invalidation of a granted patent.

YOU ME also reports that the Korean Examination Guidelines have been revised to explain that:

…the ‘background technology of the invention under Article 42, paragraph 3 of the Patent Act refers to prior art considered useful for a patent examiner to conduct a prior art search and examine for patentability, and helpful to a third party in understanding the technical meaning of the invention.’ The prior art must relate to the invention set forth in the claims and the applicant may include references to specific prior art documents, e.g., a publication number in the case of a patent document, or an author, title, publisher, or date of publication in the case of a non-patent document. If the prior art document cited in the specification provides adequate background information related to the claimed invention, the content of the document does not have to be described in detail.

IMPACT ON APPLICATIONS FOR PATENTS IN KOREA

It is generally customary, even in those jurisdictions in which it is not compulsory, to include discussion of the background art as an introduction to the invention.  Typically, this discussion establishes a problem, difficulty or lack in the relevant field of technology which is addressed by the invention subsequently described, and is helpful in establishing the nature of the contribution (i.e. inventive step) made by the inventor(s).

As noted by YOU ME, describing prior art in the specification has also been customary under Korean patent practice, although there was not previously any specific rule requiring this.

Accordingly, for many applicants the revised law will impose no additional requirements over and above their existing practices.

There may, however, be some cases in which the new Korean provision will impose an additional burden.  A failure to discuss background to the invention altogether is only one of three circumstances in which Korean examiners may reject an application.  The other two are:

1. that the background technology described in the specification does not relate to the invention set forth in a claim; and
2. that the disclosure of the background technology is insufficient to assist a patent examiner to conduct a prior art search and examination.

We have certainly seen cases in which the discussion of the background art, although present, is either so brief, or so vague, that it might fail to satisfy these requirements (we will refrain from mentioning the jurisdiction in which such cases seem most commonly to originate).  An issue may also arise if the claims are amended in the course of prosecution – for example due to newly-identified prior art – to the extent that the most pertinent background technology to the claims is different from that originally identified.

Fortunately, it will be permissible to amend the description to include suitable discussion of background art, and such amendments will not generally be considered to impermissibly add new matter.

Nonetheless, it would appear now to be preferable to include a satisfactory discussion of background technology in the specification initially filed in Korea.

Tags: Korea, Legislation, News