Chapter 6. Patent Law System [2]
Recommendation :
1. Determination of the identity of the invention before and after registration
2. Application for Application for Exception Application of Notice
3. Application of a legitimate right holder
4. Application in installments
5. Application for change
6. Treaty Priority System
7. Domestic Priority System
1. Determination of identity of inventions before and after registration
2. Application for Notice Exception Application
⑴ Definition
① A poliyc that is deemed not to be known when a technical idea is known for a reasonable reason.
⑵ Purpose
① To grant exclusive exclusive rights to a person who discloses the invention is consistent with the purpose of the Patent Act.
⑶ Type 1. Notice based on one’s intention
① Requirement 1. Application within 12 months from the date of initial announcement.
○ Example : If Invention A is announced on March 3, 2016, the application must be filed by March 3, 2017.
② Requirements 2. Description of purpose in the application form
○ Principle : Submit an application form stating the purpose at the time of application
○ You can supplement it later like submitting a certificate without writing the purpose of the application (see below).
○You can mark the purpose on the check box, but there is no need to specify the announcement.
③ Requirements 3. timely requirements for submission of certificate
○ Period 1. Date of submitting the certificate related to the announcement ≤ Application date + 30 days
○ Expression of the provision : “The documents shall be submitted to the Commissioner of the Korean Intellectual Property Office within 30 days from the date of filing the patent application.
○ Period 2. Supplementary Provisions for Future Supplementary Provisions:Even if the purpose of the application is not stated, upon payment of the supplementary feeThere are two times when you can submit a certificate of exception to the announcement.
○ Period 2-1. Substance correction period
○ New provisions on January 28, 2015 (Article 30, Paragraph 3, No. 1)
○ If a notice of submission of opinions is served, documents or certificates stating the purpose of applying for exception to the notice may be submitted.
○ Supplementary fee must be paid
○ Period 2-2. Submission date m min (date of receiving a copy of the trial for revocation of the decision on patent decision or rejection + March, date of registration of establishment)
○ New provisions on January 28, 2015 (Article 30, Paragraph 3, No. 2)
○ If a notice of submission of opinions is served, documents or certificates stating the purpose of applying for exception to the notice may be submitted.
○ Supplementary fee must be paid
○ There are similar provisions for divisional applications.
④ Other requirements
○ Discloser and applicant or inventor do not have to match.
○ If there are multiple disclosure acts, certificate documents must be submitted for each disclosure act.
○ If there is an indivisible notice after the second time, the submission of the certification may be omitted.
○ The requirements for application to the person’s intention have been eased, and the claim for exception to the notice has been recognized.
○ However, Application Disclosure or Registration NoticeIn the case of, it cannot be said that it is a notice based on one’s intention.
⑤ Effects
○ Claims for the application of exceptions to the notice of some claims are not recognized, but are recognized only as an application.
○ No reason for invalidation is constituted at the time of error registration without a claim for exceptional application of notice (domestic standards):in accordance with the reality.
○ If the claim for exception application is made, it cannot be applied from EU and China.
⑷ Type 2. Announcement against the doctor
① Definition : In a case where a person who has a duty of intimidation, fraud, compulsion, or confidentiality is notified due to carelessness.
② Requirement 1. Application within 12 months from the date of initial announcement.
○ Example : If Invention A is announced on March 3, 2016, the application must be filed by March 3, 2017.
③ Requirements 2. Written statements and certificate documents can be submitted in the event of future issues.
○ There is no provision on the date of submission of documents because the notice against the doctor is highly likely that the person does not know that the notice was made.
○ Generally, when there is a reason for rejection due to violation of novelty or progressiveness, it is explained by submitting a written opinion.
④ Requirements 3. Notification against the will of the person.
○ Example 1. If the Korean Intellectual Property Office issues a public notice of patent disclosure by mistake, it is deemed to be a disclosure contrary to the intention.
○ Example 2. Application by an unauthorized person is made against his/her will.
○ Example 3. In the case where a third party misuses and announces the notice based on the applicant’s intention.
⑸ Relationship with special applications
① Separate application
○ If there is an original application that claims to apply for the exception of notification within 12 months from the date of notification, the effect of the exception of notification is recognized even in a split application at a time when the application can be filed.
○ Submission of a written statement stating the purpose of the divisional application
○ Submit the certificate within 30 days from the date of application (∵)Since the divisional application is separate from the original application)
② Application for change
○ If there is an original application that claims to apply for a notification exception within 12 months from the date of notification, the effect of the notification exception claim is recognized even in the time when the change application can be filed.
○ Submission of a written statement stating the purpose of the application for change
○ Submit the certificate within 30 days from the date of the application for change (출 Since the application for change is separate from the original application)
③ Application for treaty priority claim
○ If there is an application for priority claim more than 12 months from the date of notification, it cannot be applied for an exception to the notification.
○ The certificate of exception must be submitted again within 30 days from the date of application for priority claim.
○ Reasons for the difference: Whether there is a principle of territorial principle
④ Application for domestic priority claim
○ If there is an earlier application that claims to apply the notice exception within 12 months from the date of the application, the effect of the notice exception is recognized even in the priority claim application at the time when the priority claim can be made.
○ The certificate of exception must be submitted again within 30 days from the date of application for priority claim.
⑤ Souppatent application
○ International patent application must be filed within December from the date of the announcement in order to receive an exception to the announcement.
○ In order to receive an exception to the notification, it is necessary to submit a statement and certificate within 30 days after the base date (Article 200)
○ (Reference)base date =min (priority date + July of 2nd year,)date of request for examination)
○ (Reference) The base date is the date of entry into the domestic stage.
⑹ Effects
① Do not judge novelty or inventive step by step.
② The date of application is not retroactive.
③ In case of violation of the method, the Commissioner of the Korean Intellectual Property Office orders correction by setting a designated period.
④ If the defect cannot be cured within the designated period, the Commissioner of the Korean Intellectual Property Office disposes of invalidating the procedure for claiming the exception to the public notice.
⑤ Example 1. No exception to novelty
○ 甲 A notice → 乙 A notice → 甲 A application
○ 甲’s application was rejected due to the loss of novelty due to 乙’s notice.
○ 乙’s application was rejected due to loss of novelty due to 甲’s notice.
○ Reasons to apply as soon as possible.
○ If the disclosure of the invention acquired by the notice of ○의 from the notice of 의 is clear, novelty will not be lost.
⑥ Example 2. No exception to the earlier principle.
○ A notice → A previous application → A subsequent application may be dismissed in A subsequent application may be rejected.
○ Reasons to apply as soon as possible
⑦ Example 3. Advances and Application of Notice Exception
○ A notice → A’ application + A claim for exception application
○ A’s application has no defects not only in novelty but also in progressiveness.
⑺ Precautions for overseas applications
① United States (35 USC Article 102b)
② Japan (Article 30 of the Japanese Patent Law)
③ China (Article 24 of the Chinese Patent Law)
○ When the exhibition was first exhibited at an international exhibition organized or approved by the Chinese government.
○ In the case where it is first announced at a prescribed academic conference or technical conference.
○ In the case where another person leaked the details without obtaining the applicant’s consent.
④ Europe (Article 55 of the EPC)
○ In a case where it is an obvious harm to the patent applicant or his/her successor.
○ When the patent applicant or his/her successor has officially, officially approved, or displayed at an international fair.
⑤ Most countries (e.g., Russia, Europe, China (some exceptions)) do not have a notice exception policy.
3. Application of a legitimate right holder
⑴ Overview
① Political party rights holder: The person who invented the invention or who duly succeeded to the right to obtain a patent from the person.
② Unauthorized person: A person who is not an inventor and is not a legitimate successor of the right to obtain a patent.
○ Type 1. When a third party applies without the party’s right holder knowing.
○ Type 2. When a third party has changed the name of the applicant without permission after the application of the party right holder.
○ Type 3. In the case where one co-inventor applies under the sole name of the joint invention.
⑵ Purpose
① Purpose 1. Disclaimer of an unauthorized person’s application or patent.
② Purpose 2. Protection of party rights holders by retroactive the date of application of party rights to the date of application of non-rights.
③ Purpose 3. Introduction of the concept of selectionism under the principle of prior application
⑶ Object requirements
① If there is an application by a legitimate right holder outside the scope of the application, the date of application by the legitimate right holder is not retroactive.
⑷ Periodic Requirements
① Case 1. Date of application for party right holder 무 Date of decision to reject patent application for non-right holder + 30 days (Article 34)
② Case 2. Date of application for party right holder 무 Date of confirmation of invalidation of patent for non-right holder + 30 days (Article 35)
③ Application period : Date of application ≤ Date of claim ≤ max (Date of non-right holder + 3 years, Date of right holder + 30 days)
⑸ Procedural requirements
① In the event that a decision to reject, a trial to dismiss an objection to the decision to reject, or a trial to invalidate a patent is confirmed, a written notice shall be given to the legitimate right holder.
② Even if the party’s right holder’s application was made before the decision to reject the patent application of the unrighteous person or the invalidity trial was finalized, the retroactive effect is recognized.
⑹ Effects
① Where an application for a political party right holder is legitimate
○ Retroactive date of application: Retroactive date of non-righteous person
○ Retroactive period of patent right: Starting from the day after the date of application of the unauthorized person
○ Starting from the day after the date of application for an unrighteous person in order to prevent the period of existence from being unfairly extended.
② In the case where the application for a political party right holder is inappropriate.
○ Application date Non-retroactive:The date of application of the party right holder becomes the date of application.
○ It may be rejected if there are other reasons for rejection based on the date of application of the party right holder (e.g., principle of prior application)
○ Non-retroactive patent rights
○ No retroactive effect if the application for a party right holder can be easily invented from the invention of an unrighteous person.recognition of progressiveness
③ In the case where a patentable invention is shared, in the case where one co-owner has registered the patent right alone.
○ Composition of reasons for invalidation of the patent
○ Other co-owners are patent holders on one’s own be able to claim the transfer of one’s shares
④ Legal handling of unauthorized persons
○ Reason for rejection, reason for providing information, reason for invalidation.
○ The status of the previous application for an unrighteous person is not recognized.
○ The status of the expanded previous application for the application of an unrighteous person is recognized.
○ A legitimate right holder may directly request the transfer of patent rights to an unrighteous person.
⑺ (Differentiated Concept) Request for Transfer of Patent Rights
① Overview
○ The situation of unauthorized application of some of the co-inventors overlaps with the application of the party right holder in practice.
○ Application of a party right holder and the right to claim the transfer of patent rights overlap in the realization of the legitimate rights of the inventor.
② Grounded laws and Regulations
○ Application for party rights: Article 34 (Application for non-righteous person), Article 35 (After patent registration for non-righteous person)
○ Request for transfer of patent right: 99-2 (after patent registration by an unauthorized person)
○ There is a limitation in that the patent transfer claim cannot exercise the rights to other inventors who are applying.
○ In order to overcome the above limitations, there is a discussion to introduce a request for change of the name of the patent application: Application of analogy of return of unjust enrichment
③ Nature of effect
○ Application for party rights: Retroactive effect of the application.creation of new rights after the extinction of old rights.
○ In order to prevent disadvantages of third parties, there is a period limitation regulation, that is, a limitation of validity (Article 104).
○ Request for transfer of patent right: Retroactive effect of right.
○ Request for transfer of patent right: There is no time limit as the rights of other inventors continue to exist.
④ method of exercising rights
○ Application for party rights: A trial for invalidation of patent rights of persons gathered at the Patent Tribunal is filed.
○ Request for the transfer of patent rights: file a lawsuit for the transfer of patent rights to the court → present the finalized judgment to the Korean Intellectual Property Office → Register the transfer of patent rights
⑤ Protection of bona fide unrighteous persons: Granting legal license of the right to use.
○ Application for party rights: Article 104 Non-exclusive license under implementation prior to registration of request for invalidation trial
○ Request for transfer of patent right: Non-exclusive license under the implementation prior to transfer registration in accordance with 103-2 request for transfer of patent right
⑻ (Differentiated Concept) Application for Unauthorized Persons (Article 34 (1)) and violation of joint invention (Article 44)
① In practice, there are many cases requested by the referee together, but it is not considered the same concept.
4. Application in division
⑴ Definition : When two or more inventions are included in the initial patent application, the partial invention is divided into separate patent applications.
⑵ Purpose : Protection of the applicant’s interests
① In case of violation of the scope of 1 application
② In the case where patent registration is sought first for flawless claims as there are reasons for rejection only for rejection.
③ In order to expand the scope of protection
④ To protect the applicant’s procedural interests:(annotation) If the applicant wishes for a separate patent right, it must be understood.
⑤ Patented net formation: InterDigital’s multi-clam strategy
⑶ Principal requirements
① The same person as the original application or legitimate successor.
② Even if the applicant is different after the division, the retroactive effect of the divisional application is not affected.
③ In the case of joint application, all co-owners must apply: Since the original applicant and the divisional applicant must be the same.
⑤ No special authorization to voluntary agent: Joint application = Only exception to special authorization
⑷ Objective Requirements
① Two or more inventions should be included in the maximum brightness of the original application.
○ The claim does not require more than one invention to be stated.
② The invention must be identical.
○ If the identity is not recognized, the reason for the decision to reject the divisional application is constructed.
○ (Reference) If the identity is not recognized under the Design Protection Act, the divisional application will not be recognized as retroactive.
③ The description or drawing of the divisional application shall be included in the maximum brightness of the original application.
④ Deferral system for claims
○ Correction date ≤ max (application date + 1 year 2 months, date of receipt of notification of purpose of request for examination + 3 months), date of application for division/change + 30 days)
⑤ Patent application for foreign language
○ Only possible if the patent application is submitted in Korean translation.
○ If the applicant corrects the specification or drawing, he/she cannot submit a new Korean translation.
○ Reason : The correction of the drawing is based on the last submitted Korean translation.
⑥ It is allowed to file a divisional application based on a divisional application.
⑸ Periodic Requirements
① Period 1. Time when correction is possible.
○ Time when the original application can be corrected.Before the Intellectual Property Office delivers a copy of the patent decision
○ Period for submitting a written opinion before and after the registration decision and the rejection decision
○ Initial rejection distribution destination and final rejection distribution destination are not distinguished.
○ Disposition of non-acceptance of divisional applications made after the period of correction has elapsed
② Period 2. Application period for rejection decision.
○ Divided application date 원Date of receiving a copy of the decision to reject the original application +30 days
○ Regardless of the order, it is possible to proceed with the procedure for filing a divisional application and requesting a rejection decision.
○ When requesting a retrial on the rejection decision, the rejection decision is canceled, so the application cannot be filed in installments.
○ In the case of simultaneous application for divisional application and a trial against rejection decision, the divisional application shall be reviewed after waiting for the results of the trial.
③ Period 3. Registration period for establishment of patent rights
○ Divided application date ≤ min (date of receiving patent decision copy + March, date of registration of setting)
○ Date of payment of patent fees = Date of registration of establishment ≤ Date of receiving a copy of the patent decision + March (date of payment)
○ Due to the delay in registration, the extension of the duration is related to the right, so it is related to the set registration date.
○ Due to this regulation, the correction period = 분할 The division period becomes possible.
○ Design Protection Act, Trademark Act: Correctable Period = Splitable Period
④ In the case of requesting a re-examination of the rejection decision, the rejection decision is canceled, so the application cannot be filed in installments.
○ It is possible to file a divisional application at the same time as the request for re-examination.
⑹ Procedural requirements
① The original application shall continue: Even if the original application is withdrawn after the divisional application, the legality of the divisional application shall not be affected.
② Divided application from claim: Need to amend deletion (∵ Because there is room for the principle of prior application)
③ Separated application from the description of the invention: No correction of deletion (∵ Because there is no room for prior application)
④ (Reference) Design Protection Act, Trademark Act : It is always required to be revised.
⑺ Effects
① Principle : Retroactive date of determination of patent requirements, date of disclosure of application, period of request for examination, and period of existence to the date of original application.
② Independence of divisional application
○ The procedure taken for the original application is not inherited.
○ Example : Even if the original application is requested for examination, the divisional application is not reviewed.
○ In the case where a request for examination is filed for the divisional application, the order of examination of the divisional application follows the order of request for examination of the original application.
③ Application DisclosureDay = max (The earlist application date + June 1 year, split application date)
○ In the case of a divisional application accompanied by the claim of priority. The earlist filing date + 1 year and 6 monthsdisclosure of application to
④ Special Cases for Appeal for Examination
○ Request date for examination mmax (original application date + 3 years, divisional application date + 30 days)
○ The order of examination of divided applications is in the order of request for examination of the original application.
⑤ Exception 1. Expanded source principle: To avoid the complexity of procedures
○ 甲 Application (a, b) → 乙 Application (b) → 甲 Application for division (b, c) → 甲 Application disclosure (a, b, c) → 丙 Application (c) → 甲 Decision of rejection (c)
○ In the application of 의 for a and b, 은 must delete and correct b.
○ a : Based on the original application date of 의, it has the status of an earlier application expanded from the date of publication of the application
○ b : Has the status of an earlier application expanded from the date of publication of the application based on the date of divisional application of 의.
○ c : Has the status of an earlier application expanded from the date of publication of the application based on the date of divisional application of 의.
○ 乙’s application: 의’s invention is included in the highest degree of original application, so it cannot be registered.
○ 丙’s application: cannot be registered due to the invention c which has the status of an expanded prior application.
⑥ Exception 2. Notification exception claim : A notice → AB application within 12 months → A split application
○ Point 1. If there is an original application that claims to apply for the exception of notification within 12 months from the date of notification, the effect of the exception of notification is recognized even in a split application at a time when the application can be filed.
○ Point 2. Since the divisional application is a separate application from the original application, the document of the claim for exception to public notice must be submitted again within 30 days from the date of divisional application.
○ Disapproved to make an exception claim for notification at the time of original application and to make an exception claim for notification at the time of divisional application (self-evident)
⑦ Exception 3. Claim of treaty priority, domestic priority: A First country application → AB Second country application → A split application in second country
○ Unable to claim domestic priority based on divisional application or change application.
○ A divisional application or a change application may be filed based on the application for application.
○ Claims on treaty priority : Submission date ≤ max (The earlist date + 1 year and 4 months, divisional application / change application date + 3 months)
○ Principle: The divisional application is separate from the original application, so the priority claim document must be submitted again.
○ Purpose : Additional time will be given in case of divisional application or change application.
○ Based on the divisional application, the starting date of the document submission period is retroactive to the second stage.
○ If the contents of the certificate are the same as the original application, the purpose may be entered in the attached document column and the certificate documents may be omitted (Article 10 of the Enforcement Rule).
○ Claim of domestic priority:Basic application is ongoing, so you don’t have to submit a certificate.
⑧ Exception 4. At the beginning of the registration delay
○ Extended by registration date - max (application date + 4 years, request for examination + 3 years) - applicant's excuse dates
○ Application by division: Date of application + 4 years of application based on the date of application by division
5. Application for Change
⑴ Overview
① Definition : Changing a utility model registration application to a patent application
② Not accepted between patent application and design registration application
③ (Reference) Patent application → Utility model registration application: Applications subject to change under the Utility Model Act.
④ (Reference) Utility Model Law is almost the same as Patent Law.
⑵ Purpose
① Patent application and utility model registration application differ in their high altitude and subject to protection.
○ Example : In the case of a material invention, utility model registration is not possible, patent registration is possible.
② It is very difficult for the applicant to grasp this, so there is a need for a remedy.
⑶ Principal requirements
① Applicant of the original application or legitimate successor.
② In the case of joint application, all co-owners must apply: Because the previous application is withdrawn.
③ The voluntary agent requires special authorization: Because the previous application is withdrawn.
⑷ Objective Requirements
① The original application is continuing.
② The application for change is included in the maximum brightness of the original application.
③ Change application can be filed with the original application for divisional application can be made.
○ However, the application cannot be divided and changed simultaneously in one procedure.
⑸ Periodic Requirements
① Date of application for utility model registration 변경 Date of application for change 최초 Date of service of initial rejection decision + 30 days + α
② +α : 30 days may be extended only for residents.
③ No change application is allowed for the copy of the final rejection decision.
○ Reason : Because the application for change of the final rejection distribution destination damages the identity of the original application.
○ If there is a new reason for rejection, the initial rejection distribution site will be used.
④ Even if the period of requesting a trial for rejection decision is extended, it does not mean that the application for change can be filed during the extended period.
⑹ Effects
① Retroactive to the date of original application: Patent requirements, application disclosure, request for examination, durationLiver.
② Application Disclosure Date = max (The earlist Application Date + 1 year June, Change Application Date)
○ In the case of a split application accompanied by the claim of priority, the application will be disclosed on the earlist application date + 1 year and half.
③ Special provisions for requesting examination
○ Request date for examination mmax (original application date + 3 years, changed application date + 30 days)
○ The order of examination of the application for change is in the order of the request for examination of the original application.
④ Exception 1. Expanded principle of prior application: To avoid the complexity of the procedure.
○ 甲 Application (a, b) → 乙 Application (b) → 甲 Application for amendment (a, b) → 甲 Application for disclosure (a, b) → 甲 decision to reject (c)
○ 甲’s original application is considered to be withdrawn immediately after the change application.
○ a : Based on the date of application for change of 의, it has the status of an earlier application expanded from the date of publication of the application.
○ b : Has the status of an earlier application expanded from the date of publication of the application based on the date of application for change of 의.
○ 乙’s application : registration is acceptable
⑤ Exception 2. notification exception claim : A notice → A application within 12 months → A change application
○ Point 1. If there is an original application that claims to apply for the exception of notification within 12 months from the date of notification, the effect of the exception of notification is recognized even in the application for change at the time when the application for change can be filed.
○ Point 2. ChangeSince the application is a separate application from the original application, the document of the notification exception claim is submitted again within 30 days from the date of the application for change.racy
○ Disapproved to make an exception claim for notification at the time of original application and to make an exception for notification at the time of change application
⑥ Exception 3. treaty priority, domestic priority claim : A 1st country application → AB 2nd country application → A split application in 2nd country
○ Unable to claim domestic priority based on divisional application or change application.
○ Based on the priority claim application, a divisional application or a change application can be filed.
○ Claims on treaty priority : Submission date ≤ max (The earlist date + 1 year and 4 months, divisional application / change application date + 3 months)
○ Principle : Since the change application is a separate application from the original application, the document claiming priority must be submitted again.
○ Purpose : Additional time is given in case of divisional application or change application.
○ Changes in the calculation of the document submission periodapplication-based two-step retrospective
○ If the contents of the certificate are the same as the original application, the purpose may be stated in the attached document column and the certificate documents may be omitted (Article 10 of the Enforcement Rule).
○ claim of domestic priority : Basic application is ongoing, so you don’t have to submit a certificate.
⑦ Exception 4. At the beginning of the registration delay
○ Extended by registration date - extension of the duration of max (application date + 4 years, examination request date + 3 years) - the applicant's excuse dates.
○ Change application : 4 years from the date of application to the date of application.
⑧ The original application is considered to be withdrawn.
○ The utility model registration application is deemed to have been withdrawn at the same time as the change application.
○ To avoid the application of the earlier provisions
○ No separate withdrawal is required.
⑺ Compare divisional application and modification application
① Difference 1. Whether or not there is special authority
○ In the case of divisional application, special authorization is not required.
○ In the case of a change application, special authorization is required because the original application is withdrawn.
② Difference 2. Rejection decision trial
○ Divided application can be compatible with the decision of rejection.
○ The application for change is incompatible with the decision of rejection.
③ Difference 3. International patent application
○ Divided applications can be made after payment of fees, submission of translation, and base date.
○ Change application can be made before the base date if the fee is paid and the translation is submitted (Article 209)
⑻ Relationship with special applications
① Application for treaty priority claim: A 1st country application → AB 2nd country application → A split application
○ Since the change application is a separate application from the original application, the document claiming priority must be submitted again.
○ treaty priority claim : Submission date m min (The earlist date + 1 year and 4 months, divisional application / change application date + 3 months)
○ Claim of domestic priority : Basic application is ongoing, so you don’t have to submit a certificate.
○ Changes in the starting date of submissionApplication Criteria + Phase 2 Retroactive
○ If the priority is not claimed when applying for a change, it will only be retroactive to the first stage.
② Application for claiming domestic priority
③ International application for PCT
○ PCT international application can be applied for change under domestic law as a utility model.
○ In the above case, it can be done after payment of the translation and fees (Article 209)
○ Procedures that can be filed prior to the base date.
○ Procedures that can be performed after the base date of the divisional application.
**6. Treaty Priority System **
⑴ Definition
① A system that retrospects the date of application when a person who has filed an application with an ally of the Paris Treaty applies to another ally and claims priority.
⑵ Purpose
① Foreign applications cause time, regional, cost, and legal difficulties
② To protect the status of prior applications internationally
⑶ Priority
① Priority may be subject to transfer
② Priority rights recognized by the first applicant
③ Priority can be waived.
④ Priority loses its independence once exercised
⑤ Priority will be the same as the application.
⑷ Subjective Requirements
① Allied citizens, quasi-aligned citizens
○ Quasi-aligned citizens : non-aligned citizens who have an address or office in the allied country.
② Applicant or legitimate successor of the basic priority application.
③ In case of joint application, the procedure can be carried out independently.
○ Differentiated from other special applications
○ It is believed that the application itself and the application may be frustrated if a person who is not an ally or a quasi-aligned citizen are included.
④ No special authorization required for voluntary representative
⑸ object requirement
① normality of first country applications
○ The first country application must be recognized as a regular application in that country.
○ Once a regular application is approved, the application is invalid, withdrawn, cancelled, or rejected, but it does not affect : the continuity of the application is not required.
○ If the first country application is rejected, it cannot be the basis for the treaty priority.
○ Applications that do not include the scope of claims are also recognized as regular applications under the grace period for listing the scope of claims.
② The earlist Applications in the First Country
○ Based on the earlist application date in the case where the earlist application in country 1 has been re-applied, divided application, or changed application.
② Same content of application
○ The second country application must be included in the first country application.
⑹ Periodic Requirements
① Patent application date, utility model registration application date ≤ the earlist application date +12 months
② Application Disclosure Date = The Earlist Application Date + 1 year and 6 months
③ Design registration application date, trademark registration application date ≤ the earlist application date + 6 months
④ Patent and utility model require sufficient time due to the translation period of the specification.
⑤ All subsequent applications are disclosed along with the earlist application.
⑥ There is no follow-up remedy for the requirements of the subsequent application date.
⑺ Procedural requirements
① Claim of priority at the time of application
○ If the applicant of the original application and the applicant of the latter application are not the same, the claim of priority will not be recognized even if it is agreed later.
○ The right to claim the priority of the treaty may be transferred to different successors.
② Submission of priority certificate
○ Submission date ≤ Top priority date + 1 year and 4 months
○ If you share a database, simply submit the application number (e.g., Japan, European Patent Office)
○ Applications for claims for exception application must also be submitted.
○ Calculated as the top priority in case there are more than one prior application.
○ Translation of priority certificate: Not mandatory submission.The Commissioner of the Korean Intellectual Property Office may order a period of two months to be submitted for examination.
③ amendment or addition of priority claims
○ Subjective Requirement: Person who has claimed priority
○ Timing Requirements : Correction/Additional Date ≤ Top priority date + 1 year and 4 months
○ Addition of priority claim: There is practical benefit in resolving the prohibition of double priority claim application.
○ 1 year and 4 month is also the due date of filing date.You just have to memorize it in a related way.
④ special case for divisional application
○ Priority certificate can be submitted within 3 months after the top priority date + 1 year and 4 months after the application date.
○ After the revision in 2013, the divisional application date + the top priority date after March + the top priority date when April arrives + the documents can be submitted by April 1 year.
⑻ Effect
① Principle : Editionshort-term retrospectiveOnly for certain matters such as patent requirements, the timing of judgment is retroactive, not the actual filing date.
○ Time to judge the principle of prior origin
○ Time to determine pre-use rights
○ Time to determine the relationship between use and conflict
○ Dual retroactive when applying for division or change
○ Application Disclosure
② Exception 1. Starting date of request for examination : Date of request for examination 후 date of subsequent application + 3 years
○ Reason 1. Application period for examination is too short based on the date of application.
○ Reason 2. Lead claims are made at once. However, there are several basic applications, and each may have a different filing date.
○ In the divisional application, the date of request for examination in the change application shall be based on the date of the previous application.
③ Exception 2. Period for submitting certificate of application for claim of exception to public notice
○ Point 1. If there is an application for priority claim for more than 12 months from the date of announcement, it cannot be applied exceptions to the announcement.
○ Point 2. Since the priority claim application is a separate application, the notice exceptional document must be submitted again within 30 days from the date of the priority claim application.
○ In the case of an application for domestic priority claim, if there is an earlier application for the application of a notice exception within 12 months, the effect of the notice exception claim is also recognized in the priority claim application at the time of the claim.
○ Reasons for the difference: Whether there is a principle of territorial principle.
④ Exception 3. Criteria for the expiration date of the period of existence : Based on the date of application in Korea (∵ territorial principles)
○ Reason 1. The most important reason called retrospective of the time of judgment, not the date of application, is considered to be due to the duration.
○ Reason 2. Because there should be no disadvantages in using the priority system.
⑤ Exception 4. Requirements for non-performance or insufficient implementation of non-performance rights by finance (∵ If the date of application for election is the standard, too many non-performance people will be included)
○ Application date ≥ max (Application date + 4 years, registration date + 3 years)
○ Reason : Since the implementation is limited to Korea, it is reasonable to base the non-execution or insufficient implementation on the date of subsequent application according to the principle of territorial principle.
○ Without such circumstancesThe timing of the judgment in the implementation of the change application or divisional application is not implemented or insufficient.retroactive box
⑥ Application for treaty priority claim, divisional application, and modification application
○ Permission of divisional application and amendment application to a person who claimed the treaty priority.
○ Claims of treaty priority based on divisional application or alteration application are not permitted: too complicated.
○ Since it is so difficult to have a priority claim, the priority claim application should be a constant, not a variable.
⑦ Inappropriate cases
○ Only retroactive effects disappear.
Opartially retroactive, partially non-retroactive
⑼ Application
① In the case of filing an application for priority claim for a part of the contents of the first country application.
② In the case where two or more priority claims are filed by dividing an application for one country in the first country.
③ In the case of filing an application for a claim of priority based on two or more applications from allies (complex priority)
○ Timing Requirements : Second Country Application Date 최우선 Top priority date + 12 months
○ Depending on the content of the claim, the same content as each previous application is determined retroactively to the date of application of the previous application.
○ Contents that are not the same for any previous application are judged as the date of subsequent application.
④ In the case where the application for priority claim includes a portion not included in the application for country 1 (partial priority)
6. Domestic Priority Policy
⑴ Overview
① Definition : A pre-application → A+B post-application within 12 months → Withdrawal of pre-application and retroactive effect of post-application to the pre-application.
② Pre-application : Patent application, utility model registration application, PCT application
③ Post-application : Patent application, utility model registration application
⑵ Purpose
① Protection of used and improved inventions
② Balance with treaty priority system in favor of foreigners : Include the invention of the previous application in one application and grant the option of subsequent application.
③ Revitalization of PCT application system : PCT applications and domestic priority system applications are often filed at the same time because the timing requirements are the same
⑶ Principal requirements
① The same person as the applicant of the previous application or legitimate successor : It only needs to be the same at the time of application.
○ According to the precedent, the person who actually succeeded is also recognized as the subject eligibility (2017F1274) : Different from the treaty priority.
② In the case of joint application, all co-owners must apply : Because the previous application is withdrawn.
③ The voluntary agent requires special authorization because the previous application is withdrawn.
⑷ Objective Requirements
① Continuation of previous applications
○ Treaty priority system does not require applications to continue.
○ The prior application for which the patent decision has been finalized cannot be the basis for claiming priority.
② Precedent application is not a divisional application or a change application : Prevention of delay in examination
③ First country → Second country treaty priority → Domestic priority : Recognized as the purpose of recommending treaty priority
④ Post-application will be included in the earlist of the previous application.
○ It is possible to claim domestic priority based on the invention that was stated in the most famous drawing of the previous application but was deleted by correction.
⑸ Periodic Requirements
① Date of post-application ≤ Date of application date + 12 months
② Date of application disclosure = Date of prior application + 1 year and 6 months
③ All subsequent applications will be disclosed along with the earlist application.
④ There is no further supplementary relief procedure for the requirements of the subsequent application date.
⑹ Procedural requirements
① The purport and the indication of the previous application at the same time as the application (Article 55 (2))
○ If the applicant of the pre-application and the applicant of the post-application are not the same, the claim of priority is not recognized even if it is agreed later.
○ In the case of an application that does not involve a domestic priority claim, the priority claim cannot be made.
② No need for proof of priority : The pre-application is in Korea, so it differs from the treaty priority.
③ Withdrawal of previous applications
○ Automatic withdrawal at each date of application + one year and 3 months (Article 56)
○ In the case where multiple pre-applications are based, each is deemed to be withdrawn when one year and three months have elapsed from the date of each pre-application.
○ In the case of disclosure of applications, all subsequent applications will be disclosed along with the earlist application.
○ Addition and correction date of priority claim ≤ The earlist application date + 1 year and 4 months (Article 55, Paragraph 7)
○ Correction of priority claim : Apparent error correction
○ Addition of priority claim : There is practical benefit in resolving the prohibition of double priority claim application.
○ Maintaining the identity of the treaty priority policy : The filing date of the treaty priority document is one year and four months.
○ Consideration of withdrawal of domestic priority claims
○ If the application for claiming priority is withdrawn within one year and three months from the date of application, the claim for priority is considered to be withdrawn.
○ Prohibition of withdrawal of domestic priority claims
○ Withdrawal cannot be made after the date of the pre-application + 1 year and 3 months because the pre-application was automatically withdrawn.
○ Reason : Since the pre-application is already considered to be withdrawn, there is no real benefit in withdrawing the priority claim.
○ It is also allowed to add priority claims from the date of pre-application + 1 year and 3 months to the date of pre-application + 1 year and 4 months.
○ Reason : Since the applicants first claimed priority
⑺ Effects
① Principle : Retroactive to the time of judgment. Only for certain matters such as patent requirements, the timing of judgment is retroactive, not the actual filing date.
○ Time point to judge the principle of the application date
○ Time point to determine pre-use rights
○ Time point to determine the relationship between use and conflict
② Exception 1. Date of calculation of request for examination : Date of request for examination ≤ Date of post-application + 3 years
○ Reason 1. Application period for examination is too short based on the date of application.
○ Reason 2. Lead claims are made at once. However, there are several basic applications, and each may have a different filing date.
○ Warning : In the divisional application and the application for change, the date of request for examination shall be based on the date of the pre-application
③ Exception 2. Claim for exception of notice
○ Point 1. If there is an earlier application within 12 months from the date of a specific notice of the same invention, the effect of the exception to the notice is also recognized in the priority claim application at the time when the priority claim can be made.
○ Point 2. Since the priority claim application is a separate application, the notice exceptional document must be submitted again within 30 days from the date of the priority claim application.
○ Warning : In the case of an application for a treaty priority claim, if there is an post-application for claiming priority for more than 12 months from a specific notice, it is not possible to receive an exception to the notice.
○ Reasons for the difference : Territorial principle.
④ Exception 3. Base date of expiration date of duration : Base date of subsequent application
○ Reason 1. The most important reason called retrospective of the time of judgment, not retroactive to the date of application, is considered to be due to the duration.
○ Reason 2. Because there should be no disadvantages in using the priority system.
⑤ Exception 4. Requirements for non-execution or insufficient implementation of non-exclusive licenses by finance
○ Billing date ≥ max (Application date + 4 years, Registration date + 3 years)
○ Reason : For the unity with treaty priority
○ Warning : A change application or divisional application without such circumstances is not implemented or the timing of judgment is retroactive in insufficient implementation.
⑥ Acknowledgement of the status of an expanded application
○ Situation : 甲 A application → 乙 A application → 甲 AB subsequent application + domestic priority claim
○ Withdrawal of the earlier application (A) on the date of the earlier application + one year and three months due to the claim of priority.
○ Application disclosure date is the pre-application date + 1 year and 6 months : Application (A) is not disclosed. Post-application (AB) is disclosed
○ 乙’s application is withdrawn as an earlier application.
○ The post-application not included in the pre-application will be disclosed in one year and a half, but it is not disapproved for the extended application status.
○ The post-application not included in the pre-application can be withdrawn by another application : Since the entire post-application may be withdrawn, deletion correction should be considered
⑦ Application for domestic priority claim, divisional application, and application for change application
○ A divisional application for a domestic priority claim application and a change application may be filed within one year and three months from the date of application.
○ Reason : The pre-application after the date of the first date + 1 year and 3 months will be considered withdrawn.
○ Unable to file an application claiming priority based on the divisional application or the change application.
○ Reason : The priority claim is so difficult in that situation.
⑻ Application
① Comprehensive priority based on domestic applications and foreign applications of the Paris Treaty Alliance
② If an international patent application is a basic application
○ Situation : An international application in which the previous application is designated by the Republic of Korea and Japan, and a later application is an application for claiming priority in the Republic of Korea.
○ The previous application is considered to be withdrawn at max (International filing date + March 1st base date) (Article 55, Paragraph 4).
○ Since Korea is included in the designated country, it is not necessary to submit a translation (Article 3, 202 leaflet).
③ In the case of an international patent application is a priority claim application
○ The date of international application is retroactive to the date of basic application: At this time, the date of basic application is called the priority date.
○ A person who intends to claim priority may file an application.
④ ○ Expanded principle of prior application
○ In the case where an international application is a basic application in the domestic priority system: Recognition of the original principle expanded only within the range where the scope of the international application overlaps with the scope of the priority claim application
○ In the case where an international application is an application claiming priority in the domestic priority system: the recognition of the original application, the original application, and the translation of the international application only overlap
⑤ Cumulative domestic priority
○ Situation : The post-application claims priority on the basis of the pre-application. The pre-application claims priority on the basis of pre-pre-application.
○ Double priority (Article 55, Paragraph 3)
○ Definition : Invention common to pre-pre-application, pre-application, and post-application
○ Effect : A’s retroactive effect is not recognized.
○ Reason : To prevent the actual extension of the priority period.
○ Post-application is disclosed at the date of the pre-application + 1 year and half months
○ Disapproval of the retroactive effect of double priority is not a big problem due to the rapid disclosure of the application.
⑼ Comparison of Treaty Priority System and Domestic Priority System
① Special Authorization
○ If an ordinary voluntary agent applies for a treaty priority claim, he/she does not need to obtain special authorization.
○ In the case where an ordinary voluntary agent files an application for claiming domestic priority, special authorization must be obtained.
② Certificate of prior application
○ In the case of an application for claiming treaty priority, the certificate of prior application must be submitted.
○ In the case of an application for claiming domestic priority, there is no need to submit the certificate of the previous application: because the previous application is ongoing.
③ Withdrawal of previous applications
○ Advancement of treaty priority claims is not considered withdrawn.
○ Appeal for domestic priority claims is considered withdrawn.
④ Application for cumulative priority claim
○ In the case of an application claiming treaty priority, only one basic application with the best potential is recognized : Double priority is impossible.
○ In the case of a domestic priority claim application, double retroactivity at the time of judgment is not recognized in the case of double priority.
Input : 2019.08.25 23:23