특허법상 분할출원제도 개선방안

Abstract

An applicant for a patent may divide a patent application comprising two or more inventions into one or more new patent applications, where the new application shall be deemed to have been filed at the time of filing of the original application. Recent increase not only in the number of filing but also in strategic use of divisional applications ask for new rules. First of all, the time limit for filing divisional applications should be expanded so that the division can be made both within the designated time limit after notice of allowance and within 30 days after notice of rejection even without appeal to that decision. Next, the KIPO examination guidelines with regard to the case of a sequence of divisional applications should be changed. According to the existing rule, where an original application(the parent application) is divided into a divisional application(the child application) and the child application is divided into another divisional application(grandchild application), the grandchild application is deemed to have been filed at the time of filing of the parent application, provided that the child application meets all the requirements for division as to the parent application, and that the grandchild application meets all the requirements for division as to the child application. Since it is a generally accepted principle of patent law that once a divisional application has been validly filed it becomes separate and independent from the parent application, the subsequent fate of the earlier application pending or not can not affect the proceedings on the divisional application. Thus, in the case of a sequence of applications consisting of a root application followed by divisional applications, each divided from its predecessor, according the filing date of the root application should be justified if the subject matter was disclosed in each of the preceding applications so that it was thereby existing at all times throughout after its disclosure in the root application as filed up to and including the date of filing the divisional application under consideration. Finally, some measures, such as fee increase for filing more than two divisionals or to make final a first office action in a divisional application where some conditions are met, should be taken to prevent abuse of divisional applications.