Mar 3, 2023
Japan: Operation of suspension of examination for divisional applications in which the original application is pending trial (effective April 1, 2023)
Regarding divisional applications for which the original patent application is pending preliminary examination or appeal against examiner’s decision of refusal and for which a request has been filed by the applicant or his/her agent, the examination of the divisional application will be suspended until the result of preliminary examination or appeal against examiner’s decision of refusal of the original application is known, effective April 1, 2023 (Article 54(1) of the Patent Act applies).
This is done to consider how to respond to a divisional application based on the results of the preliminary examination or appeal against examiner’s decision of refusal of the original application, thereby leading to the establishment of more efficient application strategies.
1. Conditions for application
The patent application must satisfy all of the following requirements (1) through (4).
(1) The request for examination was filed on or after April 1, 2023, and the application is a divisional application that has not yet been examined.
(2) It is a divisional application that was split after the decision of refusal of the original application.
(3) An appeal against Decision of Refusal is filed for the original application, and the original application is pending before a preliminary examination or an appeal against Decision of Refusal.
(4) For those waiting for the result of the preliminary examination or trial examination of the original application*1
*¹ (1) In principle, the (4) requirement is treated as being satisfied.
(ii) However, if the claims in the application of a divisional application clearly do not include specific matters specifying the invention, the (4) requirement is treated as not being satisfied, and the divisional application is not an application subject to the operation of suspension of examination.
(iii) Examples of such applications: [Claim 1] The invention recited in the specification. (e.g., a statement of claims based on the premise that a voluntary amendment will be made after the divisional application is filed).
2. Application
(1) Application period
Within 5 days from the date of request for examination of the divisional application.
(2) How to:
(i) Submit a written request explaining the circumstances regarding the application of Article 54(1) of the Patent Law to the divisional application in question.
(ii) Submit a special form to explain the circumstances regarding the application of Article 54(1) of the Patent Law to the divisional application in question.
3. Application submission procedure
1) After determining whether or not the divisional application is eligible, the applicant will be notified of the decision result by e-mail and a record of the response will be made.
2) If the divisional application is eligible, the examination of the divisional application will be suspended until three months after any of the following (1) to (3) below is made in the original application.
(1) A copy of the patent decision is served to the applicant in the preliminary examination.
(2) In an appeal against examiner’s decision of refusal, a transcript of the first trial decision*2 is served upon the applicant.
(3) The request for an appeal is withdrawn or dismissed.
*2 This does not include a trial decision in an appeal against examiner’s decision reopened as a result of a suit for revocation of trial decision filed.
3) When the period of suspension of examination is terminated due to any of the above (1) to (3), the applicant will be notified by e-mail to that effect and a record of the response will be made.
4) The applicant will submit a written request by the expiration date of the suspension period, as described in Request to the Applicant for Explanatory Documents for Division of an Application, based on the results of the preliminary examination or trial examination of the original application.
5) After the suspension of examination, the application will undergo the same waiting period for examination as a regular application, counting from the time of any of 2) (1) to (3) above, and examination will be initiated.
4. The period during which the patent right may be extended by filing an application for registration of extension pertaining to a divisional application
In the extension of the duration of the patent right for the purpose of term compensation (Article 67(2) of the Patent Law), the suspended examination period for the said divisional application falls under the period corresponding to the period from the record date*3 to the registration date of establishment of the patent right, to which the period during which the proceedings under the Patent Law relating to the patent application have been suspended, if such proceedings are suspended provided in Article 67(3)(x) of the Patent Law is applied. The period of time to be deducted from the period corresponding to the period from the record date*3 to the date of registration of establishment of the patent right is applicable.
Reference date*3: The date on which five years have elapsed since the filing date of the patent application or three years have elapsed since the filing date of the request for examination, whichever is later (Article 67(2)).
For more information, please refer to the Operation of Stay of Examination for Divisional Applications for which the Original Application is Pending Appeal (jpo.go.jp).