Home >> News & Publications >> Lee and Li Updates >> Newsletter >> Requirements regarding Post-Allowance Division under the Amended Patent Act


Requirements regarding Post-Allowance Division under the Amended Patent Act



The amended Patent Act took effect as of 1 November 2019.  Regarding the post-allowance division, in the past, a request for division was only allowed to be filed within 30 days from receipt of an allowance decision, if the parent invention application was allowed at the first examination stage.  Under the amended Patent Act, a request for division can be filed within three months from receipt of an allowance decision, no matter whether the parent invention application is allowed at the first examination stage, or at the re-examination stage.  Likewise, a utility model divisional application can be filed within three months from receipt of an allowance decision.  However, a divisional application still cannot be filed after an invention patent application is rejected at the re-examination stage, or a utility model application is rejected.

 

Further, the content of Paragraph 1, Article 29 of the Enforcement Rules of the Patent Act of the previous version was incorporated into the amended Patent Act as the forepart of Paragraph 6 of Article 34 of the amended Patent: "For a divisional patent application filed in accordance with Item 2 of Paragraph 2, it shall be based on the invention(s) disclosed in the description or the drawing(s), but shall not be the same as that which had been approved in the original patent application."  In addition, the content of Paragraph 2, Article 29 of the Enforcement Rules of the Patent Act of the previous version was incorporated into the amended Patent Act as Paragraph 7 of Article 34 of the amended Patent: The description, claim(s), or drawing(s) of the original patent application that have already been approved may not be altered.

 

The violation of the forepart of Paragraph 6, Article 34 of the amended Patent Act has been listed as one of the reasons for which a patent should not be granted or a cancellation action can be raised.  Based on the above, if an applicant would like to file a post-allowance divisional application whose claims include the same claims as the allowed claims of the parent claims, even if the applicant plans to abandon the parent application by not paying the issue fee and thus the parent application will not be published and there will no double patenting issue, the divisional application will still be rejected for violating the forepart of Paragraph 6, Article 34 of the amended Patent Act.



TOP