Operation of Divisional Applications｜IP Laws & Practices

The Japan Patent Office announces that it will commence operation of suspension of examinations for divisional applications whose original applications are pending in an appeal. Details are shown below.

1.Background
Of the divisional applications, if it was filed in conjunction with a request for appeal against the decision of refusal of the original application, it may be convenient to examine the divisional application based on the result of the re-examination or appeal of the original application. In addition, it is expected that the applicant being able to consider how to deal with the divisional application based on the result of appeal against the decision of refusal of the original application will lead to the construction of a more efficient and effective application strategy. Therefore, the following operation will commence as from April 1, 2023.

2.Overview
From April 2023, the Japan Patent Office commences the operation that Article 54(1) of the Patent Act *1 shall be applied to some divisional applications for which application of the operation has been requested by the applicant or agent, and the examinations for the above divisional applications shall be suspended until the results of the re-examinations or the appeals for the original applications are found.

*1 The examination procedure may, if necessary, be suspended, until the ruling on patent opposition or the trail decision has become final and conclusive or litigation procedure has been concluded.

3. Eligible applications
Eligible applications are those for which a request for examination has been filed on or after April 1, 2023, and which have not yet been examined, and which satisfy all of the following requirements (1) to (3).
● (1) It is a divisional application that was filed after the decision of refusal of the original application.
● (2) A request for appeal against the decision of refusal has been filed for the original application, and the original application is pending a re-examination or an appeal against the decision of refusal.
● (3) It is convenient to wait for the results of the re-examination or the appeal of the original application. *2

*2 For example, if it is clear that the statement of a claim does not include concrete matters for specifying the invention, such as "the invention described in the specification," the requirement of (3) is not satisfied. However, in other cases, in principle, it is treated as satisfying the requirement of (3).

4. Required procedure
When filing for application of this operation, the applicant or agent must complete both the following procedures (1) and (2) within 5 business days from the date of request for examination of the divisional application. (If both procedures have not been completed within the deadline and only one procedure has been completed, this operation will not be applied.)
● (1) Regarding the divisional application in question, submission of a Written Statement*3 explaining circumstances regarding the application of Article 54(1) of the Patent Act
● (2) Regarding the divisional application in question, send a statement to the effect that the circumstances regarding the application of Article 54(1) of the Patent Act are explained using a dedicated form*4

*3 An example of the Written Statement will be released before the commencement of the operation.
*4 The dedicated form will be released before the commencement of the operation.

5. Flow after filing for application of the operation
After the decision whether or not the divisional application is subject to the operation based on the filing, the determination result will be notified by e-mail and a response record will be created. If the operation becomes applicable, the examination of the divisional application will be suspended until three months after any of the following (1) to (3) is made in the original application.
● (1) A certified copy of the decision to grant a patent is sent to the applicant in the re-examination.
● (2) A certified copy of the initial trial decision*5 is sent to the applicant in the appeal against the decision of refusal.
● (3) The request for appeal is withdrawn or dismissed.

*5 Does not include trial decisions in appeals that were reopened as a result of litigation rescinding a trial decision.
If the suspension period of the examination ends due to any of the above (1) to (3), an email notification will be sent and a response record will be created.
After the end of the suspension of examination, the examination will be started after the same waiting period for examination as for ordinary applications, counting from one of the above (1) to (3).

K&P's Comments
So far, if the applicant wishes to consider contents of the claims of the divisional application after reviewing the result of an appeal against the examiner's decision of refusal of the original application, the applicant managed it by submitting a Written Statement such as "depending on the result of the original (parent) application, the present application may be withdrawn or the claims may further be amended; and therefore, we respectfully request delaying the start of the examination of the present application." as one way. However, such a Written Statement has no legal effect, and it is the discretion of the examiner whether or not to admit it. In fact, in many cases, the divisional applications were examined before the results of the original application were issued, and reasons for refusal were issued.
With the new operation, the applicant can now reliably determine the contents of the claims of the divisional application based on the result of the appeal against the decision of refusal of the original application by following the above procedures.
In addition, since the above application procedures can be performed relatively easily and inexpensively, it is recommended to actively consider the use of this procedure when filing a divisional application for the above purpose.

Kawaguti & Partners