특허법상 분할출원 제도의 현황과 과제

In the past, the main form of divisional application was the so-called involuntary divisional application to resolve the rejection due to lack of unity of invention. However, recently divisional applications have been used for various purposes, and the number of divisional applications has increased. As divisional applications are used for various purposes and the number of divisional applications increases, there are concerns about the burden of examination at the Patent Office and abuse of the system. For example, problems such as ① uncertainty in the scope of rights due to repeated divisional applications, ② delay in examination of new applications due to divisional applications, and ③ increased examination burden for divisional applications are pointed out. This article examines the current situation of the divisional application system and proposes how to improve the divisional application system based on a review of the divisional application systems in other countries. Problem ① is a common problem in all countries that operate a divisional application system. Of course, this problem can be solved to some extent by strictly limiting the timing of divisional applications, as in the UK or China. However, in Korea, the proportion of divisional applications in total patent applications is not that high compared to other countries. In addition, since 1980, the Patent Act has been continuously revised to ease the time limit for divisional applications. Thus, it is not advisable to suddenly change the policy toward stricter time limits for divisional applications. In the past, there was an attempt to solve problem ② by limiting the number of divisional applications in the United States. However, compared to the situation in the United States at that time, the delay in patent examination was not that serious in Korea. Additionally, in Korea, additional fees are required depending on the number of divisional applications. Therefore, with regard to problem ②, there is no immediate need for improvement. In summary, problems ① and ② can first be dealt with with an additional fee system, and the introduction of a time limit similar to the previous EPO or the UK can be considered later, if necessary. However, in relation to problem ③, it seems that the system needs to be improved. In the United States and Japan, the reasons for rejection of the original application are used in divisional applications and amendments of divisional applications are limited. In order to solve the problem of repeatedly notifying the same reason for rejection, it is necessary to introduce the First Action Final Rejection system used in the United States and Japan. According to the established case law of the Boards of Appeal of the EPO (G 1/06), in the situation of a sequence of divisional applications each having been divided out from its predecessor, according the filing date of the first disclosure of the subject-matter concerned in the root application is only justified if the said subject matter was disclosed in each of the preceding (earlier) applications as filed. There is a need to adopt the EPO's requirements in relation to multi-generational divisional applications in order to make the examination guidelines more reasonable and reduce the examination burden. Furthermore, it is necessary to treat the examination order of a divisional application in the same way as a regular application and have the applicant submit the information necessary for the examination of the divisional application.