Changes to patent term extensions and patent term adjustments in South Korea

May 07, 2021

South Korea has changed the eligibility requirements for patent term extensions (PTEs) and the regulations for patent term adjustments (PTAs).

PTEs and PTAs are tools for extending/adjusting a patent term to compensate applicants for portions of the patent term which were lost. PTEs aim to compensate applicants for delays caused by regulatory review processes which are required before a product is made commercially available. PTAs aim to compensate applicants for delays caused by a patent office before the patent application is granted.

Patents covering drugs under the "Narcotics Managements Act" such as narcotics-based analgesics are now eligible for a PTE in South Korea.

There are also new regulations for PTAs in South Korea. 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 new regulations specify the calculation of those delays caused by the applicant:

1) 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.

2) 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 PTE and PTA which have been made since 14 July 2020.