Everything You Need to Know About Divisional Applications in South Korea: Procedure, Costs & Advantages

In the world of patent prosecution, "divisional application" is a keyword that consistently emerges as a critical strategic tool. Recently, the use of divisional applications to strengthen patent portfolios has been rapidly increasing. With significant changes to the divisional application system slated for 2025, it is more important than ever for anyone preparing or prosecuting a patent application to understand how to leverage this opportunity.

In this column, Pine IP Firm will provide a detailed overview of the procedure, costs, and strategic advantages of filing a divisional application in South Korea.

What Is a Divisional Application?

A divisional application is a mechanism that allows an applicant to separate a part of an original (parent) patent application and file it as a new, distinct application. This is typically done when the scope of the parent application is too broad, or when the applicant wishes to seek independent protection for specific claims.

Adjusting the Scope of an Application: This strategy can be employed when a Korean Intellectual Property Office (KIPO) examiner issues a restriction requirement or when there are additional inventions within the original disclosure that you wish to pursue with more specific claims.
Stabilizing Your Rights: By proactively separating potentially contentious subject matter, you can simplify future amendments and enhance your ability to respond effectively if disputes arise.

The System Is Changing in 2025

Previously, a divisional application was assigned a completely new application number and placed at the back of the examination queue. This could lead to significant examination delays compared to the parent application.

However, starting in 2025, the system will change so that a divisional application inherits the examination priority of its parent application. This is a game-changing development. If the parent application is already well advanced in the examination process, the divisional application will also be examined promptly.

Reduced Examination Delays: This change significantly shortens the waiting period for examination, accelerating the timeline for securing your rights.
Enhanced Strategic Agility: In situations requiring a swift response, such as patent disputes or actions to deter competitors, this new system allows you to secure a more advantageous position much faster.

The Cost of a Divisional Application: Approximately 80% of the Original

In the past, the cost of filing a divisional application was often comparable to that of the parent application, making it a significant financial consideration.

Typically, the professional and official fees for a divisional application now amount to approximately 80% of the cost of the parent application.

Reduced Attorney Fees: Since the divisional application is based on the same or similar inventive content, savings can be achieved in the time required for drafting the specification and other documents.
Simplified Budgeting: This reduced cost structure makes it easier to plan your patent budget, even when factoring in potential divisional applications from the outset.

The Strategic Advantages of Divisional Applications

The benefits of a divisional application extend far beyond the upcoming advantages in examination speed and cost. The key strategic benefits include:

Expanding the Scope of ProtectionAn invention that was broadly described in a parent application can be detailed or modified with new claims in a divisional application. This allows you to refine and strategically expand the enforceable scope of your intellectual property.
Maximizing Competitor DeterrenceBy splitting a single inventive concept into multiple, distinct patents, you can create a denser and more formidable patent portfolio. This "picket fence" strategy more effectively deters infringement by competitors.
Maintaining and Securing RightsEven if the parent application faces unexpected rejections or requires a significant narrowing of its claims, a pending divisional application provides a crucial fallback, offering an alternative pathway to secure valuable rights.
Flexibility in Licensing and Technology TransferPatents secured through divisional applications can be independently assigned, licensed, or sold. This provides much greater flexibility in commercializing your technology and executing business transactions.

A Simple Guide to the Divisional Application Procedure

Strategic Decision: The decision to file is made after a comprehensive review of the parent application's prosecution, including any office actions or required amendments, as well as any further R&D.
Drafting the Specification and Claims: Meticulous care must be taken to ensure the new application is fully consistent with and supported by the parent application's specification. A thorough check is performed to prevent the omission of any critical technical details.
Filing and Fee Payment: The divisional application is filed with KIPO, and the necessary official fees (e.g., filing and examination request fees) are paid.
Examination: Under the new system effective from 2025, the application will inherit the examination priority of its parent application, enabling a faster examination process.
Registration and Post-Grant Management: Once the divisional patent is granted, we ensure there is no conflict of rights (e.g., double patenting) between the parent and divisional patents. Post-grant, strategic actions such as licensing or assignment can be pursued.

Conclusion

Effectively utilizing divisional applications is key to enhancing the robustness of your patent rights and expanding your commercial potential. With the upcoming changes in 2025 offering significant advantages in both examination speed and cost, we strongly recommend that anyone with a pending or planned patent application actively consider a divisional strategy.

At Pine IP Firm, we are dedicated to navigating these institutional changes to our clients' advantage. We provide bespoke divisional application strategies that are tailored to your specific inventions and business objectives.

If you have any questions, please do not hesitate to contact us.