NEWS & TOPICS

As of April 1, 2023, Article 54(1) of the Japanese Patent Law has been applied to some divisional applications. Article 54(1) provides for the suspension of examination. That is, the examination of certain divisional applications can be suspended under the prescribed procedures.

This will allow an applicant to consider how to proceed with a divisional application based on the result of an appeal against the examiner’s decision to refuse the parent application.

1. Eligible Divisional Applications

An eligible divisional application is a divisional application that was divided after the decision of refusal of the parent application, and that meets all of the following requirements (1) through (3) prior to the start of the examination:

(1) The examination of the divisional application was requested on or after April 1, 2023.
(2) An appeal against the examiner’s decision to refuse the parent application has been filed, and the parent application is pending in the reconsideration by the examiners before appeal or the appeal trial.
(3) It is convenient to wait for the preliminary examination result from the reconsideration by the examiners before appeal or the trial decision.

2. Necessary Procedures

Both of the following procedures (1) and (2) must be completed within 5 working days from the date of the request for examination of a divisional application:

(1) Submission of a written statement explaining the circumstances of the divisional application being subject to this operation.
(2) Sending a special form to explain the circumstances of the divisional application being subject to this operation.

We will handle both of the procedures (1) and (2) according to your instructions.

3. Period for Suspension of Examination

The examination of the divisional application is suspended until three months after any of the following events occurs in the parent application:

(1) A certified copy of the decision to grant is served in the preliminary examination.
(2) A transcript of the first trial decision is served regarding an appeal against the examiner’s decision to refuse.
(3) The request for appeal or the parent application is withdrawn or dismissed.

If you intend to file a divisional application along with an appeal for the parent application in the future, please consider using the aforementioned procedures to suspend the examination.

Please feel free to contact us for further information.