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| IP Newsletter | Summer 2015 | |
No More Declaration Requirement for 12-Month Grace Period (but with a Wrinkle)
Korean patent law provides that public disclosures made by the inventor less than 12 months before the patent filing date will not be considered prior art. (See Article 30 of the Patent Act.) For example, if an inventor published a paper or demonstrated a product less than 12 months before filing a patent application, the grace period applies and the disclosure will not be considered as prior art. However, prior to the amendment, the applicant was required to submit (i) a document on the filing date claiming the grace period, and (ii) a proof document that shows that the invention was made public by the applicant within 30 days from the date of filing. Thus, if the grace period was not requested at the time of filing, it was lost to the applicant and the applicant's own disclosures could be cited as prior art.
The amendment effectively removes the declaration requirements at filing and allows the applicant to claim the grace period against the applicant's own public disclosure made within 12 months of the filing date. This new provision, however, comes with a condition. The benefits of the grace period must be claimed during prosecution and do not apply to disclosures first discovered after prosecution of the application has closed, typically during litigation. This new amendment on the grace period is applicable for an application filed on or after July 29, 2015.
Divisional Application Can be Filed After Notice of Allowance
Previously, a divisional application could only be filed when responding to an office action. Thus, once a notice of allowance had been issued, a divisional application could not be filed. This means that if an applicant would like to guarantee the opportunity to file a divisional application, the applicant must file the divisional when responding to the office action before knowing whether the pending application would be allowed or further rejected. Thus, the previous system resulted in the filing of potentially unnecessary divisional applications simply as back-up applications since it could not be known whether it was the applicant's last opportunity to file a divisional.
Under the amendment, applicants are allowed to file divisional applications after a notice of allowance is received, up to 3 months from the date of receipt of the notice of allowance or until the application is registered, whichever is earlier. This eliminates the need to file unnecessary back-up divisionals, allowing an applicant to take a wait-and-see approach on whether to file a divisional application based on the prosecution outcome of the parent application. This new divisional practice is available for a notice of allowance received on or after July 29, 2015.
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Joon-Hwan KIM jhkim6@ip.kimchang.com |
H. Joon CHUNG hjchung@ip.kimchang.com |
Jeonghui CHO jhcho@ip.kimchang.com |