Under the current Japanese patent examination practice, an original application and its divisional application are examined separately, and after a Decision of Rejection is issued to the original application, some of the original and divisional applications are examined in parallel. However, it could be more convenient for the Japanese Patent Office (JPO) to examine the divisional application following the results of the pre-appeal examination or appeal examination of the original application. In addition, it could be more efficient for applicants if they are able to consider or modify a strategy of a divisional application following the appeal examination results of the original application. Considering the current situation, the JPO has announced the following new operations which will start on April 1, 2023.

1. Overview of the Change

Effective in April 2023, when requested by an applicant, patent examination procedure for divisional applications, which a Request for an Appeal has been filed for the original application, can be suspended until the result of the pre-appeal or appeal examination of the original application has been released. This change of practice complies with Japanese Patent Law, Article 54(1).

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2. Applications subjected to this operation

Patent applications filed with a request for examination on or after April 1, 2023, and which satisfy all of the following requirements (1) to (3).

  1. The application should be a divisional application divided after a Decision of Rejection is issued to the original application.
  2. Request for appeal against a Decision of Rejection to the original application has been filed, and the original application is under pre-appeal examination stage or an appeal against the Decision of Rejection.
  3. Application which is convenient to wait for the result of the pre-appeal examination or appeal of the original application.*1

[IMPORTANT]
A divisional application, which is filed within a response due date for an office action issued by an Examiner at a pre-appeal stage or an office action issued by a board of an appeal at an appeal stage, is also subject to this practice.

3. Procedural requirements

An applicant or their representative shall undergo both procedures (1) and (2) within five working days from the filing date of the request for examination for the divisional application. If both procedures have not been completed by the due date, or only either of the procedures has been completed, the application will not be subject to this operation.

  1. An applicant submits a petition*2 explaining the circumstances in which the divisional application in question falls under Article 54(1) of the Japanese Patent Law.
  2. An applicant submits an online form*3 explaining the circumstances in which the divisional application in question falls under Article 54(1) of the Japanese Patent Law.

4. Flow after submitting the above documents

After the JPO examines whether or not a divisional application in question is eligible for this operation based on the above application documents, the applicant will be notified of the result by e-mail and a record of the response is made. If eligible, the examination of the divisional application will be suspended until three months after the completion of any of the following 1) to 3) to the original application.

  1. A certified copy of the pre-appeal decision of grants is sent to the applicant.
  2. A certified copy of the first appeal decision*4 on an appeal against the examiner's decision of rejection is sent to the applicant.
  3. The request for appeal is withdrawn or dismissed.

When any of the above (1) to (3) terminates the period of suspension of examination, the applicant will be notified by e-mail and a record of the response is made.

When the suspension of examination period expires, the examination for the divisional application will be undertaken, counting from the date of either of the above 4. 1) to 3). However, the examination may be in line with the examination for a regular application,

[IMPORTANT]
Please note that Retraction of the Request for Suspension of Examination is NOT ACCEPTED. That is to say, once the Request for Suspension of Examination is filed, the examination of the divisional application will be suspended until three months after the above (1) or (2) as long as the applicant does not undergo the above (3).

Reference:
https://www.jpo.go.jp/system/patent/shinsa/general/bunkatu-shutugan_chushi.html

Footnotes

*1: If the recitations of claims do not include specific features of a certain invention, such as "the invention described in the specification" etc., the application in question is not deemed to satisfy requirement (3). Other cases except the above are deemed to satisfy the requirement (3) in principle.

*2: Example of description of petition will be posted on the JPO website in advance

*3: Online form will be posted on the JPO website in advance

*4: This first appeal decision does not include decision of appraisal appeal which is brought by and reopened after filing a lawsuit to revoke the appeal decision.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.