미국법상 임시출원 제도와 청구범위 유예제도

U.S. provisional application for patent and Korea patent law Article 42(5)

Korea patent law Article 42(5) is revised in 2007.1.3, effective in 2007.7.1 so that inventor is not required to file application with claims which shall be submitted within 18months by amendment. It provides the means to establish an early effective filing date when claim is amended. Applicants of provisional application are entitled to claim the benefit of a provisional application in a corresponding non-provisional application filed not later than 12months after the provisional application filing date. Also provisional application allows filing without a formal patent claim. So Article 42(5) is apparently similar to U.S. provisional application but different in substance. The trade between Korea and U.S. will be more active than before because of Free Trade Agreement. The study of comparison between Article 42(5) and provisional application might be useful under this situation. The provisional application is unique system especially to the first to file system countries. It is adopted to overcome disadvantage to U.S. inventors compared to their non-U.S. counterparts. But international patent society is not familiar with the provisional application under the environment of globalization in patent. So it has some legal issues regarding Paris convention which provides regular patent application and foreign priority and may not be easy to accept provisional application. The revised patent law Article 42(5) also has common character with provisional application in being filed without claims as mentioned above. So it has the same legal problems as provisional application. This paper reviews and compares these legal matters between Korea patent law Article 42(5) and U.S. provisional application based on U.S. patent law (35 USC) including code of federal regulation (37 CFR) and Korea patent law. Also Paris convention was beneficial tool to find distinction between provisional application and Article 42(5). In the first half of this paper, procedural matters, advantage and disadvantage of provisional application is explained based on U.S. patent law. The rest of this paper goes over the difference between provisional application and Article 42(5) using provisional specification system. Finally this paper concludes that Article 42(5) is a good system because it is closer to international patent law than provisional application but a few problem remains to be seen regarding legal and practical field.