Suspension of examination of a divisional application while the original application is pending trial

August 2023
ADMINISTRATIVE AFFAIRS DIVISION

When a divisional application was filed in conjunction with a request for an appeal against the examiner’s decision of refusal of the original application, it may be more convenient to examine the said divisional application based on the result of the reconsideration by examiners before appeal proceedings or the appeal decision. For the applicant, being able to consider how to proceed with the divisional applications according to the outcome of appeal against the examiner’s decision of refusal of the original application may lead to a more efficient and effective filing strategy.

Therefore, a divisional application that meets certain conditions, for which a request has been made by the applicant, will be suspended from examination while the original application is pending the reconsideration by the examiner before appeal proceedings or the appeal against the examiner's decision of refusal.

Update Notice (June 27, 2024)

Supplementary additions have been made to section 4, "Flow after submission of required documents."

1. Overview

From April 2023, Article 54(1) of the Patent Act will be applied to some divisional applications for which a request has been made by the applicant or applicant’s agent, so that the examination of such divisional applications will be suspended until either the result of the reconsideration by examiners before appeal proceedings or the appeal decision of the original application is known.

The length of the suspension period of examination for this operation will be deductible in accordance with the Article 67(3)(x) in the calculation of the extension period under Article 67(2).

2. Applications subject to this operation

The application subject to this operation is a patent application for which a request for examination was filed on or after 1 April 2023, yet the examination process has not been started, and which satisfy all of the following three requirements (1) through (3).

• (1) The application in question is a divisional application filed after its original application was given decision of refusal (*1).
• (2) An appeal against the examiner’s decision of refusal of the original application has been filed and either the reconsideration by examiners before appeal proceedings or the appeal against an examiner’s decision of refusal is pending.
• (3) Where it is convenient to wait for the result of the reconsideration by examiners before appeal proceedings or the appeal decision.(*2)
• *1 Only a “ child application”, a divisional application from an original application, is eligible and divisional applications from a child application (“grandchild applications”) are not eligible.
• *2 When it is clear that the claims of invention do not contain a concrete matter, for example phrases such as “invention stated in the descriptions” was found, the requirement (3) is not met, otherwise the requirement (3) is considered being met.

3. Required Procedures

When requesting implementation of this operation, the applicant or the agent must complete both procedures (1) and (2) below within five working days from the date of request for examination of the divisional application. (Please note that the application will not be subject to this operation if both procedures have not been completed within the time limit and only one procedure has been completed.)

• (1) Submission of a written statement*3 explaining the circumstances of the divisional application being subject to this operation regarding the applicability of Article 54(1) of the Patent Act.
• (2) Sending the special form explaining the circumstances of the divisional application being subject to this operation regarding the applicability of Article 54(1) of the Patent Act.

4. Flow after submission of required documents

Based on the request, whether or not the divisional application is eligible for this operation is determined. The applicant will be notified of the decision by e-mail and a response record will be prepared. If this operation is applied, examination of the divisional application in question is suspended until three months after one of the following (1) to (3) is completed with the original application.

• (1) A certified copy of the examiner’s decision made in the reconsideration by examiners before appeal proceedings is served to the applicant.
• (2) A certified copy of the initial appeal decision(*4) to the appeals against the examiner’s decision of refusal is served to the applicant.
• (3) The appeal request or the original patent application is either withdrawn or dismissed.
• *4 It does not include the case when a decision was made for appeals against an examiner’s decision of refusal that had been resumed as a result of a revocation action against appeal/trial decision.

When a suspension period for examination is ending following the completion of one of the above (1) to (3), the applicant will be notified of the expiration date of the suspension by e-mail and a response record will be prepared.
The applicants are kindly advised to consider how to proceed with the divisional application based on the result of the reconsideration by examiners before appeal proceedings or the appeal decision of the original application, and to submit the written statement as described in "Request to Applicants for Submission of Explanatory Documents in Filing Divisional Application" by the last date of suspension (this written statement is different from the written statement described in 3.(1)).
At that time, please ensure that the following amendments 1. and 2. are made regarding the divisional application:

1. Amendment to ensure that the inventions in the divisional application and in the original application do not constitute the same invention (See Section 2.(2) of "Request to Applicants for Submission of Explanatory Documents in Filing Divisional Application ").
2. Amendment to overcome reasons for refusal in the original application (e.g., lack of novelty or inventive step, violation of enablement requirement, etc.) (See Section 2.(3) of "Request to Applicants for Submission of Explanatory Documents in Filing Divisional Application").

When the suspension period expires, the examination process will start after a general waiting time calculated from one of the occasions of the above (1) to (3). Please note that, during the suspension period applicants are able to make amendments to the descriptions etc. of the divisional applications according to Article 17bis of the Patent Act.

[Last updated 24 July 2024]

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