Recently, the Korean Supreme Court held that a divisional application can enjoy a grace period for applicant’s own disclosures, even if the grace period was not claimed in the parent application (Case No. 2022 Hu 11479 rendered on August 31, 2022). As a result, even if an applicant (intentionally or mistakenly) did not claim a grace period in a patent application, the applicant can now benefit from the grace period in Korea by simply claiming it at the time of filing a divisional application. 

​▶ Facts of the Case

The applicant filed a patent application titled “Method for wiring a sequence control circuit” (“the parent application”) on December 23, 2014, without claiming a grace period under Article 30(1) of the Korean Patent Act (“KPA”). During the prosecution, however, the KIPO Examiner rejected the parent application for lack of novelty and inventiveness, based on the applicant’s own paper published on August 2014.

The applicant then filed a divisional application on August 30, 2016, while claiming a grace period for the self-disclosed prior art. (Since the filing date of the parent application was December 23, 2014, there was no way to correct the defect within the prosecution of the parent application, as the revisions to the KPA allowing the later-claiming of a grace period after a filing date of a patent application under certain conditions went into effect on July 29, 2015.)

The KIPO Examiner, however, rejected the applicant’s claim for the grace period with regard to the divisional application and further rejected the divisional application for lack of novelty and inventiveness, based on the same self-disclosed prior art. Although the applicant lodged an appeal against the rejection before the Trial Board and then filed a judicial appeal before the Patent Court, both the Trial Board and the Patent Court concluded that the request for the benefit of the grace period for the divisional application could not be accepted since no such request was made at the time of filing the parent application. 

​▶ Relevant Provisions of the KPA

With regard to a grace period, Article 30(1) of the KPA stipulates that for the purpose of assessing the novelty and inventiveness of a patent application, public disclosure of an invention made by a person having a right to obtain a patent thereon shall not be regarded as prior art as long as the patent application is filed within the grace period of twelve (12) months from the disclosure date. Article 30(2) stipulates that an applicant who seeks to invoke the grace period provision is required to state the purport thereof in the patent application upon filing and submit an evidentiary document to the KIPO within thirty (30) days from the date of filing the patent application. In addition, Article 30(3), established on January 28, 2015 and applicable for a patent application filed on or after July 29, 2015, introduced a way for later-claiming the grace period after the filing date of a patent application under certain conditions.

With regard to a divisional application, Article 52(2) of the KPA stipulates that a divisional application shall be deemed to have been filed when the parent application was filed; provided, however, that for the purpose of applying Article 30(2), which specifies the time to submit a request for invoking a grace period and the period to submit an evidentiary document, it shall be deemed to have been filed when the divisional application was filed. (This is because, in many cases, when the time to submit a request for invoking a grace period and the period to submit an evidentiary document are retroactively applied to the original filing date, they have already lapsed at the time of filing the divisional application.) 

​▶ Patent Court Decision

The Patent Court decided that a divisional application was not eligible for the grace period if the grace period was not claimed at the time of filing a parent application for the reasons that (i) if such claiming in a divisional application was allowed, Article 30(2) of the KPA would be easily circumvented, and (ii) the legislative intent for the applicability of Article 30(3), which provides an opportunity to correct a procedural defect in claiming a grace period due to a simple mistake by an applicant to a patent application filed on or after July 29, 2015, is interpreted such that retroactive application thereof may impair the legal stability. 

​▶ Supreme Court Decision

On appeal, the Supreme Court overruled the Patent Court’s decision and concluded that even though the grace period had not been claimed in the parent application, in view of the context of the provisions of a grace period and a divisional application and the purpose of each system, it is reasonable to interpret that the divisional application can enjoy the benefit of the grace period, provided that the claim of the grace period is timely made in filing the divisional application.

The Supreme Court stated the reasons for its decision as follows:

i) Articles 52(2) and 30(2) of the KPA do not stipulate that a claim for a grace period in a parent application is a prerequisite for recognition of the grace period in a divisional application;

ii) There exists a practical need to recognize the later-claiming of a grace period for a divisional application because there may be a situation where an applicant needs to secure a patent right on an originally disclosed, but not claimed, invention(s), which may relate to the applicant's self-disclosure, with a divisional application, while a claimed invention(s) of a parent application does not relate to the applicant's self-disclosed prior art;

iii) A divisional application is a system separate from a correction/amendment for remedying a defect in a patent application, and is an application independent of a parent application. Accordingly, it is reasonable to consistently interpret whether or not to allow a request for claiming a grace period in a divisional application when such a claim was not made in a parent application, regardless of whether it is before or after the introduction of a supplementary system for providing an opportunity to remedy an unclaimed grace period through Article 30(3) of the KPA established on January 28, 2015; and

iv) It is unreasonable to limit the recognition of the grace period in a divisional application based on the original filing date of the parent application, considering that the grace period provision has evolved as a vehicle to effectively protect the applicant’s rights as an inventor by expanding the types of disclosures, extending its application not only to novelty but also to inventiveness, and extending the duration from six months to one year.

▶ Implications of the Decision

In accordance with the Supreme Court’s decision, in addition to (i) claiming a grace period at the time of filing a patent application under Article 30(2) of the KPA and (ii) later-claiming it within the periods stipulated in Article 30(3) of the KPA, an applicant may benefit from a grace period in Korea by (iii) claiming the grace period for a divisional application even if the applicant did not (intentionally or mistakenly) claim it at the time of filing the parent application. The revision of the patent examination guidelines of the KIPO, which is expected to be revised in December 2022, also reflects the Supreme Court ruling to recognize the application for a grace period in a divisional application regardless of the filing date of the parent application.