Mr. Kuniaki Shimizu（清水邦明）
Patent Attorney
May 2007 (Partially amended in August, 2009 in accordance with the 2008 Partial Revision of the Patent Law.)
1. The current divisional application system of the Patent Law in Japan includes two systems. One is the old divisional application system which is applied to patent applications filed before April 1, 2007, and the other is the new divisional application system which is applied to patent applications filed on or after April 1, 2007. The old divisional application system has restriction as to the times for filing a divisional application as explained in item 2 below and it cannot be used easily, but the new divisional application system has been amended to make it acceptable to applicants as explained in item 3 below. I would like to explain how to utilize the old divisional application system, and contents of the new divisional application system and utilization thereof hereinafter.
2. Old Divisional Application System
(1) The old divisional application system is applied to patent applications filed before April 1, 2007. Under the old divisional application system, an applicant may file a divisional application at the following times:
(a) before delivery of a notification of an examiner's decision of patent or before issuance of a first Office Action,
(b) within a period for a response to an Office Action, and
(c) at the same time as the time at which an Appeal against examiner's decision of rejection was lodged. The appeal may be lodged within 3 months (4 months for foreign applications) from the delivery of an examiner's decision of rejection.
The above time when a divisional application can be filed corresponds to the time when the applicant can file voluntary amendments.
(2) After a notification of the examiner's decision of patent is delivered, the applicant is no longer allowed to file any divisional applications or any amendments, even if the applicant wishes to do so. Therefore, if a patent application includes a very important invention for the applicant, it is recommendable to file a precautionary divisional application (not for obtaining a patent but for defending inventions disclosed in the application) within the above time period (a), because there is a possibility that the applicant would receive a notification of examiner's decision of patent without any Office Actions. If the applicant files such a precautionary divisional application within the above term (a), and even if the applicant receives the examiner's decision of patent without any Office Actions, the applicant can have the opportunity for carefully reviewing contents of the precautionary divisional application and claiming another useful invention disclosed in the precautionary divisional application, and place the divisional application under examination.
(3) On the other hand, after a notice of the examiner's decision of rejection is issued, if the applicant wishes to file a divisional application, first of all the applicant must lodge an Appeal against the examiner's decision and the applicant can file a divisional application at the same time as lodging the Appeal in accordance to the above period (c).
(4) After the examiner's decision of rejection is issued, if the applicant hopes to file a voluntary amendment, the applicant has to lodge an Appeal against the examiner's decision and file the voluntary amendment at the same time as lodgment of the Appeal. However, the amendments are severely limited to the reduction of the claim(s). Accordingly, if an amended claim(s) is shifted or expanded even slightly from the scope of claim(s) before the amendment, the trial examiners would dismiss the amendment and at the same time issue an Appeal examiner's decision of rejection. In this case, if the applicant hopes to pursue a patent, the applicant must file a lawsuit with the Intellectual Property High Court, but the applicant cannot make any amendments at this step.
Therefore, when the applicant receives an examiner's decision of rejection, we recommend the applicant to file a precautionary divisional application at the same time as the lodgment of the Appeal. If the applicant files a precautionary divisional application, and even if he receives the trial examiner's decision for rejecting the parent application under Appeal, the applicant may abandon the parent application under Appeal and pursue a patent on the basis of the precautionary divisional application through a further examination procedure.
Further, after the applicant files a precautionary divisional application at the same time as the lodging of the Appeal, the applicant may receive an Office Action stating that the precautionary divisional application has substantially the same claim(s) as that of the parent application and the Office Action may request withdrawal of one of the parent and the precautionary divisional applications due to the reason of double patenting. In response to such Office Action, it is recommended that the applicant abandons the parent application under Appeal and continues the precautionary divisional application to pursue a patent through the examination procedure. On the other hand, if the applicant hopes to obtain another patent by filing the precautionary divisional application, the applicant may overcome the reason for double patenting rejection by amending a claim or claims of the precautionary divisional application to define an invention other than the invention claimed in the parent application.
3. New Divisional Application System
The new divisional application system is applied to patent applications filed on or after April 1, 2007. The new divisional application system includes following contents.
According to the new divisional application system, an applicant may file a divisional application within 30 days from the delivery of a notification of the examiner's decision of patent or within 3 months (4 months for foreign applications) from the delivery of an examiner's decision of rejection. However, it is to be noted that the new divisional application system is not changed to allow applicants to file any divisional applications after the trial examiner's decision.
Under the new divisional application system, accordingly, the applicant need not file a precautionary divisional application for purpose of the above 2(2), because the applicant may file a divisional application within 30 days from the delivery of the notification of the examiner's decision of patent. In that case, the applicant may obtain a patent on the basis of the examiner's decision of patent and further the applicant may file a divisional application including claim(s) defining another invention disclosed in the application within 30 days from the delivery of the notification of the examiner's decision of patent. If an applicant hopes to obtain a patent on the parent application and to file a divisional application, the registration fee of the parent application should be paid as late as possible, since the applicant cannot file any divisional applications after a patent has been registered by paying the registration fee. Otherwise, the applicant may file a divisional application within 30 days from the delivery of the notification of the examiner's decision of patent and abandon the parent application without paying a registration fee.
On the other hand, under the new divisional application system, when the applicant receives an examiner's decision of rejection, the applicant can select a procedure as to whether the applicant lodges an Appeal and/or files a divisional application. In this case, if the applicant decided to file a divisional application, the applicant may file such application with or without lodging an Appeal. If the applicant wishes to make some amendment(s) to claim(s), it is desirable to file a divisional application to be examined by the Examiner. If the applicant wishes to pursue a patent without making any amendments, it is desirable to lodge an Appeal requesting the trial examiner's judgment on the claim(s) rejected by the Examiner. In such case, the applicant can file a precautionary divisional application for the same purpose as the above item 2(4).
