[Law Amendment] Priority Claims and Supporting Documents No Longer Required When Filing Divisional Applications (Effective 2022.04.20)

The amended Patent Act took effect on April 20, 2022, and the changes call for attention in practice.

When filing a patent application, the applicant may claim priority from an earlier domestic or foreign patent application. An application claiming priority from a domestic application is called an application claiming domestic priority, and an application claiming priority from a foreign application is called an application claiming Convention priority. The deadline for claiming priority is one year.

For example, to file in the United States based on a Korean application, the applicant can, within one year from the Korean filing date, file a PCT application claiming priority or file a separate application in the United States claiming Convention priority.

In this situation, applicants sometimes file divisional applications from an application that claims priority, for various strategic reasons. For example, Google may file a PCT application claiming priority from a US application, enter the national phase in Korea, receive a decision to grant during examination, and then file a divisional application to expand its patent portfolio.

Under the previous law, Google would have had to check the priority claim to the US application again in the divisional application form and submit the priority documents. If the priority claim was not checked and the documents were not submitted, priority was not recognized, and problems often arose in which the divisional application itself became invalid with no means of remedy.

Accordingly, for divisional applications filed on or after 2022.04.20, the effective date of the amended law, the priority claim and submission of supporting documents are no longer required at filing if the parent application claimed priority and submitted the supporting documents.

An applicant who files a divisional application naturally intends to expand its patent portfolio while keeping the priority benefit of the parent application. A system that deems the priority claim to be made automatically, in line with the applicant's intent, is a reasonable one that should have been introduced long ago.

Because priority claims will now be deemed made for divisional applications, filing practice will become simpler, and the harm of unintended procedural invalidation for right holders should disappear.

LNB IP Law Firm