[Law Amendment] Introduction of Separate Applications for Claims Not Rejected, After an Appeal Is Dismissed (Effective 2022.04.20)

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

The amended law adds a new Article 52-2. If an applicant who received a final rejection files an appeal and the appeal is dismissed, a separate application may be filed, within 30 days from the date a certified copy of the trial decision is served, for claims that were not subject to any ground of rejection in the final rejection.

This addresses a problem under the previous law: when a final rejection found no ground of rejection for some claims, an applicant who filed an appeal without filing a separate divisional application could lose the chance to obtain any patent at all.

A divisional application can be filed within the period for filing an appeal against final rejection or before registration, whereas a separate application can be filed within 30 days after a trial decision dismissing the appeal.

A divisional application can be extended into a series of patents forming a portfolio through further divisional applications (divisionals of divisionals, and so on). By contrast, no further separate application, divisional application or converted application may be filed based on a separate application.

With the introduction of separate applications, an applicant who files an appeal seeking broader protection, even though some claims were found allowable in the final rejection, can still file a separate application for those allowable claims if the appeal is later dismissed. The applicant therefore no longer has to file a divisional application within the appeal period.

Note, however, that a new divisional application cannot be filed after a separate application. An applicant who wants to build a larger patent portfolio through new divisional applications must therefore file a divisional application within the appeal period.

In practice, if no further divisional applications are planned and the appeal is filed to obtain broader protection, it seems advisable to rely on the separate application system.

LNB IP Law Firm