APAA e-Newsletter (Issue No. 27, February 2022)

Introduction of a Separate Application System: Revision of Korean Patent Law

Yunsoon Choi, Yoon & Yang (IP) LLC (Korea)

The revision of the Korean Patent Law, which will come into force on April 20, 2022 introduces a ‘separate application’  (Article 52-2 of the Korean Patent Act). A separate application is a system in which patent claims that are not rejected in a final rejection of an application can be filed separately after an appeal against the final rejection is dismissed.

Under the current Korean Patent Law, if an appeal against a final rejection is dismissed, the application is finally rejected as a whole even though some allowable claims are included in the rejected application and there is no procedure to file a divisional application with the allowable claims. For this circumstance, in order to preemptively secure the allowable claims, applicants often use divisional applications for the allowable claims when applicants file the appeal against the final rejection. (From 2016 to 2020, about 40% of the appeal cases against the final rejection were filed together with the divisional applications.)

This new separate application system is being introduced in order to prevent unnecessary additional divisional applications when an appeal is filed and to give applicants an opportunity to acquire patent rights to allowable claims after an appeal proceeding.

A separate application may be filed within 30 days from the date when a certified copy of the dismissal decision is served, and only claims that are not rejected in the final rejection may be pursued in the separate application. In addition, any additional separate application, a divisional application, or a converted application cannot be filed based on the separate application.

Although the applicant may get only one chance to utilize the separate application, without any subsequent application such as additional separate, divisional, or converted application, it is expected to be a useful option for applicants to consider when allowable claims are included in finally rejected patent applications.