The Ministry of Intellectual Property of Korea (the “MOIP”) has recently amended its standards for determining double patenting between genus and species invention filed on the same date. This change was introduced through a partial amendment to the Guidelines for Examination of Patents and Utility Models (the “Amendment”), published in February 2025.
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Details of Amendment
The Amendment essentially removes a presumption under the previous Guidelines that two inventions with the same filing date are not substantially identical, provided they would not be considered substantially identical if filed on different dates in either order.
Specifically, the Amendment deletes the following provision (the “Provision”):
“(6) where the filing dates and substances of Inventions A and B are the same on the assumption that Invention A is a prior-filed application and Invention B is a later-filed application, the two inventions will be treated as not being the same, if Invention A is not substantially the same as Invention B on the assumption that Invention B is a prior-filed application and Invention A is a later-filed application.”
In practice, this Provision has allowed genus and species inventions with the same filing date to be presumed not substantially identical, even if a divisional application is filed to claim a genus concept covering a species invention filed earlier in time.
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Background and Purpose of Amendment: Prevention of Redundant Patenting and Consistency in Standards for Determining Identicalness
Under the previous Provision, it has been difficult for MOIP to reject a divisional application for double patenting over its parent application unless the claims were literally identical. Applicants could argue that the divisional application that is otherwise broader than the parent application would be not be considered substantially identical if it had been filed before the parent application. This has led to a situation where a patentee can obtain multiple patents claiming overlapping or substantially identical inventions over multiple applications from the same application (with the same legal filing date), while another applicant might be rejected for filing such applications on different filing dates under the first-to-file rule.
Therefore, the Amendment seeks to (i) prevent duplicative patenting of substantially identical inventions in general, and (ii) eliminate the disparity in double patenting evaluations between applications filed by the same applicant on the same date and those filed on difference dates. It reinforces the principle that even if there are differences in certain features of two inventions, they are treated as identical if such differences are minor changes that a person of ordinary skill in the art would ordinarily adopt without any special difference in purpose, operation or effect (Supreme Court Decision 2007Hu2827 rendered on September 24, 2009).
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Practical Impact and Countermeasures
The Amendment is expected to significantly increase the likelihood that claims of divisional applications will be rejected for double patenting in violation of Article 36 (First-to-File). Any applicant with standards previously similar to Korea’s (such as Japan) should pay particular attention when filing patent applications in Korea.
As an example, before the Amendment, if one invention claimed a “metal” and another claimed “aluminum,” the “metal” invention would generally be considered substantially identical to the “aluminum” invention if filed later. Conversely, however, the “aluminum” invention would not be considered substantially identical to the “metal” invention if the “aluminum” invention was claimed later, and it would have been possible to file a valid divisional application under Article 36 that claimed a genus of a species filed in the parent application. This would have been rejected if the two applications had different filing dates. After the Amendment, this will no longer be possible.
In addition, it should be noted that, after the Amendment, even if a genus concept invention is a prior-filed application and a species concept invention is a later-filed application, patentability will be determined based on whether the species concept invention can be obviously conceived from the genus concept invention. In other words, it will be judged in the same way novelty is determined where the two inventions are described as a genus concept invention and a species concept invention. For example, in the case where the claim describes “silver” as the material for superconducting cables for power transportation, and the prior art reference discloses superconducting cables made of “metal” materials, novelty may be denied if using silver for superconducting phenomena in power transportation is a well-known and commonly used technology. Similarly, whether the species concept invention of a divisional application is a violation of Article 36 (First-to-File) will be determined based on whether the species concept invention of the division application can be obviously conceived from the genus concept invention of the original application.
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After the Amendment became effective, applicants pursuing a divisional application should consider not only formal difference from the parent application, but also whether the divisional application can be obviously conceived from the parent invention. In addition, since a divisional application that was already registered under the pre-Amendment practices may become a ground for invalidation, it is necessary to keep in mind the possibility of pursuing correction in future disputes.
When drafting specifications, it has now become more important to clearly and specifically describe the remarkable technical effects arising from the differences in the configuration. Finally, to safely secure patent rights, it is advisable to set up a wide range of embodiments and dependent claims within a single application. If necessary, applicants should strategically consider filing divisional applications during the examination process.
[Korean Version]
