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There are clear benefits to a divisional patent application based on the results of a preliminary examination or trial, explains Ryo Maruyama of Kyosei International Patent Office.
From April 2023, Article 54, Paragraph 1 of the Japan Patent Act applied to some divisional applications filed by applicants or agents. Under this regulation, the Japan Patent Office will start the procedure of suspending the examination of the divisional application until the result of a preliminary examination or trial of the original application is clarified.
The suspension period of the examination will be reduced by calculation of the period that can be extended according to Article 67, Paragraph 3, Item 10 of the Patent Law.
It can be beneficial to consider a divisional application based on the results of the preliminary examination or trial of the original application, if this could be filed together with a request for appeal following the refusal of the original application.
1. (See Overview diagram above)
2. Application eligibility requirements
Applications for which a request for examination has been filed on or after April 1, 2023, which have not yet been examined, will need to satisfy the following eligibility requirements 2.1 to 2.3.
2.1 The divisional application is divided after the decision of refusal of the original application. Multiple divisional applications can qualify from one original application.
Only child applications are eligible, and grandchild divisional applications that use a child application as the original application are not eligible, unless the child application is also pending pre-examination or trial.
2.2 A request for appeal against the decision of refusal has been filed for the original application, and the original application is pending a preliminary examination or an appeal against the decision of refusal.
2.3 Consideration is made that it is beneficial to wait for the result of pre-examination or trial of the original application. If it is clear that the statement of a claim does not include specific matters specifying the invention, this requirement 2.3 is not satisfied. In principle, other cases will be considered to fulfil requirements 2.3.
3. Required material submission procedures
When applying for this suspension, the applicant must complete both of the following procedures 3.1 and 3.2 within five office days from the date of request for examination of the divisional application.
3.1 Submit a written statement explaining the circumstances regarding the application of Article 54(1) of the Patent Act to the divisional application in question.
3.2 Send an explanation of the circumstances regarding the application of Article 54, Paragraph 1 of the Patent Act to the divisional application in question using a dedicated online form.
4. Flow after application
After judging whether the divisional application qualifies for suspension based on the request, the judgment result will be notified to the applicant by e-mail and a response record will be created. If the application qualifies, the examination of the divisional application will be suspended until three months after any of the following points 4.1 to 4.3 is enacted for the original application.
4.1 A certified copy of the decision to grant a patent is sent to the applicant in the pre-examination.
4.2 A certified copy of the initial trial decision is served to the applicant in the appeal against the decision of refusal. This does not include trial decisions in appeal trials that were reopened as a result of litigation to revoke trial decisions.
4.3 Request for appeal or original application is withdrawn or dismissed.
If the suspension period ends due to any of the preceding 4.1 to 4.3, an e-mail will be sent to that effect and the end date of the suspension period, and a response record will be determined.
Applications will not be accepted to cancel the suspension of examination and to resume the examination before the suspension process follows points 4.1 to 4.3 and the assigned end of the period, accordingly.
Applicants must, before the end of the suspension period, consider how to deal with the divisional application based on the results of the pre-examination or trial of the original application, and procedures should be taken such as voluntary amendments or a withdrawal of application based on the result of the original application.
Further information can be found at: https://www.jpo.go.jp/system/patent/shinsa/general/bunkatu-shutugan_chushi.html
Ryo Maruyama(丸山亮) is a Japanese patent attorney and vice-president and chief patent attorney of Kyosei International Patent Office. He can be contacted at: firstname.lastname@example.org
Kyosei International Patent Office, divisional application, Japan Patent Act, JPO, preliminary examination