분할출원에 따른 특허법 제36조 제2항 적용시 발명의 동일여부 판단 - 특허법원 2017. 10. 12. 선고 2017허1021판결을 중심으로 -

Determination of the sameness of inventions is required in the various aspects of the patent law such as novelty, first-to-file doctrine, enlarged first-to-file doctrine, and divisional applications. The standard for the determination shows wide spectrum from the literal sameness to the substantial sameness. Article 36 of the Patent Act stipulates first-to-file doctrine, and the Subsection 2 of the Article stipulates for the treatment of the cases where multiple applications are filed on the same day. For the divisional applications, the filing date of the application can be retracted to the filing date of the original filing date, so that the filing date of both applications to be the same, making neither of the applications to be patented. We discussed the standard for the determination of the sameness under the Article 36 Subsection 2 of the Patent Act, with a case at hand where the claim of a divisional application for a pharmaceutical composition partially overlaps with the claim of the original application. Domestic and foreign cases regarding the issue have been reviewed, and the standard for the sameness has been discussed in terms of the conflicting patent rights, from the point of view of protest of working of one’s own patent, genus-spices inventions, and voluntary divisional applications. It is concluded that the inventions where only some part of the claims are superimposed with each other, shall not be deemed to be the same. Applying the standard to the case we found that it is appropriate to patent both the parent and the divisional application.