Effective from April 1, 2023, the Japanese Patent Office (JPO) has introduced a new practice to suspend the examination of specific divisional applications* whilst the parent application is still pending at appeal, upon request by applicants.
* See Eligible divisional applications below.
Reason for the new practice
It is common for patent applicants in Japan to file precautionary divisional (child) application(s) in conjunction with an Appeal against a Decision of Rejection for the corresponding parent application, in order to maintain the prosecution of the invention regardless of the result of the appeal.
Under the previous JPO guidelines, the appeal examination of the parent and the substantive examination of the divisional ran in parallel. An office action for the divisional application was more likely to be issued before the outcome of the appeal for the parent. This effectively restricted applicants' ability to refine their inventions and claims in response to the appeal.
According to the new rule, the applicant can now request that the examination of the divisional application be suspended until the appeal result of the parent.
The JPO believes this will make it more convenient for examiners to examine divisional applications with reference to the appeal results. It also provides applicants with opportunities to develop more efficient and effective claim strategies for the divisional application based on the outcome of the appeal.
Eligible divisional applications
Applications for which examination requests are filed on or after April 1, 2023, and which meet the following requirements:
(1) The divisional application was filed after a Decision of Rejection (office action) was issued against the parent.
(2) A request for an appeal against the Decision of Rejection has been filed for the parent, and the parent is under pre-appeal re-examination or appeal.
(3) It is advantageous to wait for the result of the pre-appeal re-examination or appeal of the parent.
* Since divsionals can be filed if office actions are issued during the pre-appeal re-examination or appeal stage, these are also eligible for the new practice.
Procedure
To request suspension of examination of the divisional, an applicant should submit (1) and (2) below to the JPO within five working days from the date the request for examination was filed.
(1) A petition for suspension of examination of the division application (under article 54(1) of the Japanese person act)
(2) A dedicated online form explaining the eligibility of the request.
KIPB Japan can advise on these procedures and file the petition and online form for you upon request.
After filing the request
The JPO will determine whether the divisional application is eligible for the new procedure and notify the applicant. This correspondence will be available to the public.
If eligible, the examination will be suspended for up to three months after any one of the following Appeal stage outcomes of the parent:
(1) A copy of the Decision of allowance during the pre-appeal re-examination stage of the parent is sent to the applicant.
(2) A copy of the first* appeal Decision (grant or rejection) is sent to the applicant.
(3) The request for appeal is withdrawn or dismissed.
After the suspension period ends, examination of the divisional application will commence and proceed as per standard examination procedures for divisionals.
*This does not include a second appeal decision issued due to a lawsuit for revoking the first appeal decision.
** It is not possible to retract the request for suspension of examination.
KIPB advice
We have long advocated for this new practice and highly recommend taking advantage of it.
It has previously also been sensible to file precautionary divisional applications when a Decision of Rejection has been issued for an application, and the applicant is unsure whether the appeal will succeed or restrict the scope of their invention. However, since the first result of the divisional examination was always more likely to come before the appeal outcome, applicants were often in a quandary as to what strategy to employ in response.
The new practice removes this unfavourable scenario and guarantees the applicant a 3-month window to reconsider/amend the scope/direction of the divisional application with knowledge of the appeal results for the parent.
Further, since divisional applications cannot be filed after a grant via an appeal, the new practice also allows applicants to pursue other inventions based on the original disclosure even after an appeal decision or allowance.
Originally Published 09 March 2023
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
