Patent Office Extends Refund Claim Period for Incorrectly Paid Patent Fees from 3 Years to 5 Years

Status of Refund Amounts for Fees Such as Patents. Provided by the Korean Intellectual Property Office

[Asia Economy (Daejeon) Reporter Jeong Il-woong] The period during which applicants and rights holders can claim a refund for fees mistakenly paid due to errors will be extended from the existing 3 years to 5 years.

On the 18th, the Korean Intellectual Property Office (KIPO) announced that it will extend the exercise period for refund claims of fees related to patents, trademarks, and designs by 2 years through simultaneous amendments to the Patent Act, Trademark Act, and Design Protection Act.

The extension period will be applied from today.

Under the existing Article 84 of the Patent Act (Refund of Patent Fees, etc.), the right to claim a refund of patent fees and other fees expires 3 years after the date of receiving the refund notification, and unrefunded amounts are forfeited to the national treasury.

As a result, the fees for patents and other rights that were mistakenly paid but not refunded and thus forfeited to the national treasury have been estimated to average 250 million KRW annually.

By entity and number of cases (as of 2018), small and medium-sized enterprises (SMEs) accounted for the largest amount with 141 million KRW and 1,926 cases, followed by domestic individuals with 117 million KRW and 2,657 cases, and mid-sized enterprises with 15 million KRW and 176 cases.

In particular, individuals and SMEs accounted for 84.9% of the total amount of mistakenly paid fees that were not refunded.

In most cases, this involved paying fees exceeding the calculated amount or cases where one joint rights holder paid the registration fee without the others knowing, leading to duplicate payments by other rights holders.

Previously, KIPO introduced and implemented a system where applicants could pre-register the account to receive refunds, allowing KIPO to refund fees ex officio when fees were mistakenly paid. At the same time, the introduction of mobile electronic notifications improved convenience by enabling individual applicants to easily apply for refunds via mobile phones.

In addition, by extending the refund claim period by 2 years compared to before, KIPO expects that the opportunity to receive refunds for mistakenly paid patent and other fees will increase.

Lee In-sil, Commissioner of KIPO, said, “With the extension of the fee refund claim period from the current 3 years to 5 years, we expect the rights and interests of fee payers to be more strongly protected. KIPO will continue to explore various methods to ensure that mistakenly paid patent fees (registration fees), application fees, and other fees are not forfeited to the national treasury without being refunded.”