Application of First-to-File System for the Filing of Divisional Applications
(Interpretation of the ‘identical invention’ of Article 36 (2) of the Korean Patent Act)
The Korean Patent Act adopts the first-to-file system, and Article 36 (2) of the Korean Patent Act regulates that 「in the case that two or more patent applications for the same invention were filed on the same date, the corresponding applicants should discuss the matter and decide which one of the applicants can obtain the patent right for the one invention since only one applicant can do so. However, if such discussion cannot be established or maintained, neither one of the applicants can obtain the patent right for the corresponding invention.」
Regarding the above regulation, there has been some debate as to whether a violation of the first-to-file system can be applied to a divisional application due to the parent application (Article 36 (2) for the Korean Patent Act) for the reason that the parent application and the divisional application are already registered.
2. Examination guidelines and related debates
Regarding determination of the Identity of an invention to which the first-to-file system is applied, the Examination Check Guidelines of the Korean Intellectual Property Office (KIPO) describe as follows:
- In the case that first-to-file is a subordinate concept and a subsequent application is a super ordinate concept, the subsequent application violates the first-to-file system.
- In the case that first-to-file is a super ordinate concept and a subsequent application is a subordinate concept, the subsequent application does not violate first-to-file system in principle. However, if it is a fact that two inventions which were filed, whether first or later, are identical, it means that in the case that not only if their technical constitutions entirely accord to each other but also if they accord partially to each other, both inventions will be regarded as identical inventions unless there are specific circumstances such as only parts besides the accorded parts constituting the invention or the said accorded parts connect to a new invention organically and become a new invention as an integral part. Even if both inventions have differences in their constitutions, both inventions will be regarded as identical inventions in the case that a person having ordinary skill in the art to which the inventions pertain changes one or the other as a common adaptation and the purpose and a substantial difference in the effect of the invention does not occur (Supreme Court 84hu30).
- In the case that subordinate and super ordinate concepts were filed on the same date, such does not correspond to a violation of the first-to-file system.
3. Overview of Judicial Precedents
(1) Related legal principles of the Korean Supreme Court
In the relationship between a parent application and a divisional application, a decision on their identity should be made based on the sameness of the technical constitutions described in the claims of both inventions, and their effects should be considered. Even if their technical constitutions have differences, both inventions should be regarded as identical inventions in the case that such differences only correspond to nonoccurrence of a new effect caused by adding, deleting, changing, etc. commonly used art (Supreme Court decision 2002hu2778 etc.).
(2) Recent Patent Court cases
The Patent Court’s decision for 2017hu1021 announced on October 12, 2017 is in regard to a case in which an invalidation trial was requested since a divisional application violated the first-to-file system against a parent application. Reviewing the examination process, it can be seen that the examiner in charge made a decision of refusal for Claims 2 and 3 during the examination of the parent application, and the applicant obtained registration of the patent by filing a divisional application for Claim 3 and requesting a trial for Claim 2 for cancellation remand. The examiner rejected the divisional application but the applicant obtained registration after the cancellation remand. As the relevant facts show, the applicant wished to obtain registration with one application since the parent and divisional applications were all included in one application; however, the examiner made an improper decision of refusal such that that claims of one application were divided.
Regarding Claim 1 of the divisional application and Claim 2 of the parent application, the Patent Court decided that Claim 1 of the divisional and Claim 2 of the parent application are the same invention and that the filing of the divisional application violated the first-to-file system (Article 36 (2)) due to the parent application by mentioning the following legal principle of the Supreme Court:
Both inventions were made based on the identical technical idea and specifically the differences of their adopted technical constitutions are simply caused by different description.
If such difference is merely made by changing boundaries of an invention or if commonly used art was merely added, deleted or changed so that it cannot be seen as a new effect occurring, said cases substantially correspond to identical.
In the said case, one application was inevitably divided into two applications due to the Patent Court’s fault and the court is hereby reprimanded since they mentioned that such was the fault of the holder of the patent right.
When an application contains various claims and any one of the claims has a ground for rejection, the whole application itself should be rejected. Thus, occasionally an applicant files a divisional application of the registrable dependent claims among rejected claims and gets registration for a patent first, and then files a request for a trial against the rejected claims.
In such case, violation of the first-to-file system can still be applied between a parent and divisional applications thereof, so one should be cautious in relation to applicability of Article 36 (2) of the Korean Patent Act per the principle of this precedent.