[거절사정][집31(4)특,121;공1983.10.1.(713),1338]
If two or more inventions are filed as a single application, the legality of the divisional application without correction of the original application
In cases where two or more inventions are filed as one application under Article 45(1) of the former Enforcement Rule of the Patent Act (Ordinance No. 314, Mar. 23, 1970) (Ordinance No. 314, Dec. 23, 1970), it is legitimate as a divisional application even if it is necessary to correct the original application as one application for a divisional application, even if it is not required to correct the original application as a single application for a divisional application, as well as where two or more inventions are described in the detailed description or drawings of the invention.
Article 10 of the Patent Act, Article 37 of the Enforcement Rule of the Patent Act
[Defendant-Appellant] Defendant 1
The Commissioner of the Korean Intellectual Property Office
Korean Intellectual Property Office Decision (Seoul High Court Decision 548 delivered on February 11, 1983) No. 548
The original adjudication shall be reversed, and the case shall be remanded to the Korean Intellectual Property Trial Office.
The ground of appeal by the claimant is examined as follows.
1. According to the reasoning of the original decision, the court below held that the application in this case was unlawful as a divisional application since it was filed as a divisional application of the original patent on October 16, 1971 (application number omitted), and according to the provisions of Article 9 of the former Patent Act and Article 45 of the Enforcement Rule of the same Act, the divisional application shall be corrected as one invention while the examination of the original application is in progress and a new application for other invention shall be filed. However, even though the claimant has to correct the original application as one invention during the examination of the original application and shall make a new application for other invention, prior to the notification of the decision on the appeal of the original application, the claimant has legally corrected the original application as one invention.
2. According to Article 9 of the former Patent Act (Act No. 1293, Mar. 5, 1963) which was in force at the time of the initial application, a divisional application shall be deemed to have been filed at the time when the initial application was filed, if two or more inventions are divided into two or more applications. According to Article 45(1) of the Enforcement Rule of the same Act (Ordinance No. 314, Mar. 23, 1970) and Article 45(1) of the same Act, a person who wishes to divide one patent application including two or more inventions into two or more applications shall correct the initial application into one application for invention and shall file a new application for other inventions. However, if two or more inventions are described in the scope of the initial application as well as in the detailed description or drawings of the invention, the initial application shall be deemed lawful even if it is not necessary to correct the initial application as a single application for patent.
In this case, the claimant asserts that the invention of this case is indicated in the detailed description of the original invention and it is not necessary to correct the original application for a divisional application (see the concurring opinion of January 20, 1981). Therefore, in comparison with the contents of the original application and the contents of the application, the court below should have deliberated whether the original invention of this case can be seen as a patent application for an invention separate from the original application even if it is not corrected as a part of the detailed description of the original invention, as alleged by the claimant, and should have judged that the divisional application of this case is legitimate, even if it is not corrected, if it is deemed unnecessary to correct the original application.
3. Ultimately, the application of this case was deemed unlawful solely on the ground that the original adjudication was not corrected, on the ground that it was unlawful as a divisional application, since it committed an incomplete hearing and an unlawful act of omission of judgment, and there are reasonable grounds for this issue. Therefore, the original adjudication is reversed and remanded to the Korean Intellectual Property Office for further proceedings. It is so decided as per Disposition by the assent of all participating judges.
Justices Lee Lee Sung-soo (Presiding Justice)