[Patent Talk] Core Patents, Divisional Applications and the "Patent Game"

This is a column contributed by our patent attorney Taeyoung Lee to Etoday on November 2, 2021. It discusses the importance of securing divisional applications for core patents.

[Patent Talk] Core Patents, Divisional Applications and the "Patent Game"

During the recent parliamentary audit, Lee Sung-man, a lawmaker of the Democratic Party of Korea, pointed out that the success rate of patent invalidation trials in Korea is 42.6% (185 of 434 cases), far higher than Japan's 24.3% and the United States' 25.6%. He cited a severe shortage of examiners as the main reason. I partly agree, but I believe it is also necessary to re-establish the criteria for judging inventive step so that they are applied more flexibly to improvement inventions.

However, lowering the invalidation rate of patents depends on the policies of the relevant institutions, such as KIPO and the Patent Court, so companies that file patent applications need to focus on something more fundamental. Regrettably, even a registered patent may later be invalidated by new prior art that was not found during examination. Invalidation rates vary somewhat from country to country, but the possibility of invalidation exists everywhere.

A patent is invalidated because an interested third party has filed an invalidation trial along with evidence. The very fact that an invalidation trial has been filed suggests that the patent is close to being a core patent. In practice, the most unfortunate case is when only a single patent covers such a core technology.

When there is only one patent, the patentee's options are very limited. The main one is to retain a capable attorney and respond well to the invalidation trial. The only other available measure is a request for correction or a correction trial to partially amend the claims, but the requirements for correction are strict, so this has its limits.

For core patents, global corporations adopt a strategy of building a portfolio of multiple patents through several divisional applications. The aim is to secure a broad scope of rights from various angles, but another important reason is to secure a safety margin, since no one knows which of the patents might be invalidated.

In Netflix's "Squid Game," which has recently become a global hit...

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