Takaoka IP distributes news articles providing information on frequently asked questions and the latest legal amendments regarding Japanese patents, trademarks, and other intellectual property matters. Here, we have compiled key points and links to related articles that you should be sure to keep in mind regarding divisional applications for Japanese patents.
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Timing: Be mindful of the final chance to file a divisional application.
Under the Examination Guidelines at the link below, a divisional application may be filed only at certain specified timings.
Among the times at which a divisional application may be filed, the timing that generates the most inquiries, and that warrants particular attention, is filing a divisional application within three months from the date on which the certified copy of the first examiner’s decision of refusal has been served. This is because, after receipt of an examiner’s decision of refusal, if the above three-month period mentioned has passed, there may be cases in which no opportunity arises to file a divisional application for that application.
(Although a divisional application may be filed if a notice of reasons for refusal is sent during reconsideration by examiners before appeal proceedings after an examiner’s decision of refusal, or during appeal examination, a notice of reasons for refusal after a request for appeal is filed is not necessarily sent in every appeal case.)
As described above, when an examiner’s decision of refusal is received, it should be borne in mind that it may represent the last chance to file a divisional application, and the necessity of filing a divisional application should be considered without fail.
Amendment: Be mindful of Japan-specific reasons for refusal concerning claims in divisional applications.
When instructions are provided regarding claims at the time of filing a divisional application, common requests include “maintaining the same claims as in the international application” or “retaining the same claims as in the parent application prior to division.”
However, as introduced in the article below, Japanese patent practice includes special provisions that restrict the scope of permissible amendments in examination of a divisional application after division.
In light of the Japan-specific reasons for refusal that are characteristic of Japanese patent examination, it is recommended that, for the claims of a divisional application, amendments such as amendments to resolve the reasons for refusal raised in the parent application be made, at the latest, before examination of the divisional application begins.
With regard to claims of divisional applications, attention should be paid to the above Japan-specific reasons for refusal.
Helpful: Consider using the suspension of examination system introduced in recent years
A new system relating to divisional applications began operation in 2023. If this system is of interest, please refer to the article below.
Traditionally, there was no correlation whatsoever between responding to an examiner’s decision of refusal for the original application and responding in examination of a divisional application. In practice, these two responses proceeded simultaneously and in parallel. In such cases, there was a disadvantage in that it was difficult to effectively coordinate the claims amended in the original application with the claims intended to be obtained in the divisional application.
By utilizing the system explained in the above article, it becomes possible to defer finalizing the claims for which examination is requested in the divisional application until the time when a notice is received to the effect that examination of the divisional application is suspended. In other words, it becomes possible to consider what to do with the claims of the divisional application in light of the content of the final claims, which are the examination results of the original application.
In cases where the appeal for the original application and examination of a divisional application are pending concurrently, please also consider making use of the above system.
