The revised Korean Patent Act effective on July 1, 2009(herein as "Revised Act") has introduced Direct
Reexamination, and has extended the opportunity for filing a divisional application.
1. In connection with the Revised Act, we are going to review the changes in the opportunities for amending
the specification of an application as well as filing a divisional application. Further, we will provide you with
information about what should be considered when selecting the time for a divisional application and how
you can make use of a divisional application under the Revised Act.
[Table] Opportunity for Amending the Specification and
Filing a Divisional Application under The Revised Act
2. The current Patent Act stipulates that an applicant may file a divisional application within the period for
amending the specification of an application2). That is, the period for amending the specification and that for
filing a divisional application are exactly the same under the current Patent Act.
As shown in the above table, however, the Revised Act does not allow an amendment of the specification if
an applicant files for a trial disputing the final rejection within the prescribed period, while the Revised Act
does allow a divisional application to be filed.
In particular, when an applicant receives a final rejection for the first time (the case of (4) in the above table),
he can amend the specification and can file a divisional application by selecting the response strategy of
direct reexamination. Please note that, by contrast, when the applicant receives a final rejection after the
reexamination (the case of (5) in the above table), he can dispute the unreasonableness of the final rejection
by filing for a trial or can file a divisional application, but cannot amend the specification.
3. As discussed in the above, the Revised Act does not allow an amendment of the specification after
receiving a final rejection under reexamination, therefore, it is advantageous that an applicant files a
divisional application to resolve any lack of unity3) and a divisional application in order to obtain a quick grant
to patentable claims4) before or at the time of requesting a direct examination, which is the last chance to
make an amendment to the specification.
4. In addition, we are of the opinion that it is more advantageous for an appliant to file a divisional application after receiving a final rejection after reexamination (in case of (5) in the above table) in the following cases
rather than filing the divisional application when receiving a final rejection for the first time.
(1) If there are patentable claims after reexamination, an applicant can file a divisional application containing
the patentable claims and can have a patent granted, without filing for a trial5).
(2) Provided that all claims are rejected and the decision is made final6), an applicant can file a divisional
application as a precaution while disputing the unreasonableness of the final rejection.
(3) Instead of disputing the unreasonableness of the final rejection, an applicant can proceed with a new
examination procedure by filing a divisional application.
(4) If an applicant wants to use the examination result of the corresponding application filed on other nations, he can delay the completion of examination by filing a divisional application7).
5. The opportunities for amending the specification of an application and filing a divisional application under
the Revised Act applies for applications filed on or after July 1, 2009.
1) The Revised Act has introduced a direct reexamination system by which an applicant may amend the
specification and request the direct reexamination within 30 days from the date of receiving a final rejection
(a reexamination system under the current Patent Act which should be preceded by a request for trial has
been abolished). Therefore, an applicant can select (a) a request for a direct reexamination or (b) a trial
disputing a final rejection alternatively as a response strategy. If a request for a direct reexamination is made,
the final rejection is deemed cancelled.
2) Under the current Patent Act, the period for amending the specification are before a decision of
patentability, within a period filing a response to Non-final Office Action, within a period filing a response to
Final Office Action, or within 30 Days after requesting a trial disputing final rejection.
3) No amendment of the specification including claims is allowable after a final rejection under
reexamination. Therefore, an applicant cannot cancel the divided claims from an original application, as a
result he should file multiple divisional applications, numbering as many as the number of inventions.
4) Because the Revised Act does not allow any amendment including a cancellation of claims after receiving a final rejection under reexamination, the same claims can exist in both the original application and its
divisional application when an applicant files a divisional application containing the patentable claims. In this
case, the examination board holds the examination of a divisional application until a decision of final
rejection is made final. If a final rejection to the original application is made final, the divisional application is granted for a patent. If a final rejection to the original application is reversed and a patent is granted, the
examination board issues an Office Action to the divisional application under the violation of First-to-File Rule.
5) The current Patent Act allows a divisional application to be filed after requesting a trial, but the Revised Act
stipulates that an applicant can file a divisional application within the prescribed period for requesting
a trial without requesting the trial.
6) In an application where there are multiple claims and there is a ground for rejection for at least one claim
among them, the entire patent application should be rejected.
7) The speed of examination is faster in Korea compared to that in other nations, and the standard for
evaluation of non-obviousness is also comparatively strict in Korea. Therefore, an applicant can file a
divisional application to delay completion of the examination and to be able to reflect the examination result
of corresponding applications into the Korean application. In particular, Korea operates a Patent Prosecution
Highway (PPH) Pilot Program with the United States and Japan, therefore a decision of a patent grant in the
United States and Japan can be powerful reference for the examination of Korean application. |
