Korea: Patent term extensions also available for narcotics

The Korean Patent Act stipulates two possibilities to extend the regular patent term beyond 20 years from filing date:

• Patent term extensions (PTEs) for patents in the pharmaceutical or agrochemical field (similar to SPCs in Europe)
• Patent term adjustments (PTAs) for delays in the granting procedure, if they are caused by the Korean Patent Office.

A revision of the Patent Enforcement Decree in 2020 took on bord new regulations for both types of extensions:

With regard to PTEs, the scope of pharmaceutical patents eligible for an extension was extended. It includes now also patents covering drugs under the "Narcotics Managements Act" such as narcotics-based analgesics.

As for PTAs, the Enforcement Decree provides new regulations on the exact time period for a PTA. In general, a PTA can be requested for the period exceeding four years from filing or three years from examination request (whichever ends later) - minus all delays which can be attributed to the applicant. The Decree particularly specifies the calculation of those delays caused by the applicant:

• In case of a decision of refusal, an applicant may file a request for a re-examination procedure. Under the old regulations, only the re-examination procedure itself was considered a "delay caused by the applicant" (= period from the re-examination request to the decision). Under the new scheme, not only the re-examination procedure itself but also the period of up to 30 days for filing a re-examination request is included in this calculation.

• After filing an examination request, the applicant is often requested to submit further documents which are important for the substantive examination. If the applicant does not submit these documents within eight months from examination request, the additional period will also be deducted from the time compensation.

These regulations apply to all requests for term extensions (PTE and PTA) which have been made since 14 July 2020.

For further information, please refer to KIPO's press release of 13 July 2020 (in Korean).

Are you interested to learn more about patent term extensions and adjustments in Korea and other jurisdictions? Please join our series of virtual classrooms on SPCs and term extensions in the EU, Japan and Korea, together with an outlook on new provisions in China.