[Law Amendment] Domestic Priority Claims Allowed Even After a Decision to Grant (Effective 2022.04.20)

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

Under the previous law, Article 55(4) of the Patent Act, which governs applications claiming domestic priority, referred to the case where, "at the time of filing the patent application, a decision on whether to grant a patent or a utility model registration, or a trial decision to reject, has become final with respect to the earlier application." As a result, domestic priority could not be claimed once a decision to grant had been issued for the earlier application.

This limited applicants' options and prevented them from filing strategically for improvement inventions.

Under the amended law, Article 55(4) of the Patent Act now refers to the case where, "at the time of filing the patent application, the earlier application has been registered, or a decision to reject a patent, a decision to reject a utility model registration, or a trial decision to reject has become final."

The amended law applies to priority claims where a certified copy of the decision to grant or the final rejection was served on or after 2022.04.20.

Accordingly, under the amended law, even after the earlier application has received a decision to grant, the applicant can choose, as long as one year has not passed from the filing date of the earlier application, whether to register the earlier application or to file an application claiming domestic priority based on it.

This is expected to enable strategic filings for improvement inventions going forward.

LNB IP Law Firm