Request to Applicants for Submission of Explanatory Documents in Filing Divisional Application

July 24, 2024
(Original: June 29, 2009)

Examination Standards Office

In the report "The State of the Patent System" (February 2006) of the Intellectual Property Policy Committee of the Industrial Structure Council, it was reported that "in order to improve the efficiency of the examination process pertaining to the divisional applications, it is appropriate to establish a rule to clearly indicate the portions changed from the original application by underlining statements in the claims and description of the divisional application."

In addition, it is essential for the prompt and accurate examination of divisional applications to provide information on which matters stated in the claims, description, or drawings of the original application have been used as the basis for the invention claimed in the divisional application, and how the invention claimed in the divisional application differs from the invention claimed in the original application or in other divisional applications.

In response to these requirements, applicants are requested to submit a written statement, referred to as an “explanatory document,” when filing a divisional application. This document should clearly indicate the portions changed from the original application and provide an explanation, such as how the substantive requirements for a divisional application have been met. The following outlines the structuring and clarification of the specific methods of explanation in the written statement, and the submission period and any other relevant issues. Please continue to provide a written statement when filing a divisional application.

A similar principle is also outlined in the Examination Handbook (see Examination Handbook for Patent and Utility Model, Part VI, Chapter 1, 6104).

Note.

1. Matters to be explained in a written statement and when to submit

When filing a divisional application, applicants are requested to provide an explanation in a written statement regarding the following points.

• (1) To clearly indicate the portions changed from the original application, and ensure that these changes are within the scope of the matters stated in the description, etc., of the original application.
• (2) To ensure that the invention claimed in the divisional application and the invention claimed in another patent application (which is deemed to have been filed simultaneously with the divisional application under the provisions of Article 44(2) of the Patent Act. The same shall apply hereinafter.) are not identical.
• (3) To indicate that the reasons for refusal pertaining to another patent application (limited to divisional applications filed on or after April 1, 2007, with retroactive effect) have been resolved.

In addition, applicants are requested to submit a written statement that explains the above points on or before the date of filing a request for examination. However, if you wish to apply for the "suspension of examination of a divisional application while the original application is pending trial," please submit a written statement that explains the above points by the last date of the suspension period, not on or before the date of filing a request for examination (please also refer to "Suspension of examination of a divisional application while the original application is pending trial.").

2. Specific methods of explanation

（1）Clear indication of the portions changed from the original application and the explanation

Applicants are requested to clearly indicate the changed portions and provide an explanation of the changed content for the following matters: regarding the claims, description, or drawings of the divisional application, specifying which statements in the claims, description, or drawings of the original application have been changed, and identifying which matters stated in the claims, description, or drawings of the original application have been used as the basis for the invention claimed in the divisional application.

Specifically, please provide the following explanation.

A. The claims

（a）The case where changes are made in the claims

If changes are made in the claims of a divisional application from the claims of the original application immediately prior to being divided, applicants are requested to transcribe the changed claims in a written statement, and to clearly indicate the changed portions by means such as underlining the portions changed from the corresponding claims stated in the claims of the original application immediately prior to being divided. Applicants are further requested to provide an explanation of what changes have been made and indicate which statements in the claims, description, or drawings of the original application immediately prior to being divided the changes are based on.

（b）The case where claims are newly stated

If an invention stated in the description or drawings of the original application immediately prior to being divided is newly stated as an invention claimed in the divisional application, applicants are requested to provide an explanation of which statements of the description or drawings of the original application immediately prior to being divided the statements are based on. In this case, it is not necessary to provide a clear indication of the changed portions by underlining.

（c）The case where the claims state matters that are not stated in the description, etc., immediately prior to being divided, but are stated in the originally filed description, etc.

If an application is divided within a period during which amendments to the original application can be made and the statements in the claims are within the scope of the matters stated in the originally filed description or drawings of the original application, but extend beyond the scope of the matters stated in the claims, description, or drawings of the original application immediately prior to being divided, applicants are requested to provide an explanation of which statements in the originally filed claims, description or drawings of the original application the statements are based on.

B. The description and drawings

（a）The case where changes are made in the description and drawings

If changes are made in the description or drawings of a divisional application from the description or drawings of the original application immediately prior to being divided, applicants are requested to transcribe the paragraphs of the description or drawings that include changed portions of the divisional application in a written statement, and to clearly indicate the changed portions by means such as underlining the portions changed from the description or drawings of the original application immediately prior to being divided. Applicants are further requested to provide an explanation of what changes have been made and to indicate which statements in the claims, description, or drawings of the original application immediately prior to being divided the changes are based on.

（b）The case where deletions or formal changes (e.g., changes of paragraph numbers only) are made in the description and drawings.

If changes in the description of the divisional application, which have been made from the description or drawings of the original application immediately prior to being divided, are deletions of the description or drawings of the original application immediately prior to being divided or are formal changes (e.g., changes of paragraph numbers only), applicants are requested to indicate the deleted portions and provide an explanation of what changes have been made. In this case, it is not necessary to provide a clear indication of the changed portions by underlining.

（c）The case where the description and drawings state matters that are not stated in the description, etc., immediately prior to being divided, but are stated in the originally filed description, etc.

If an application is divided within a period during which amendments to the original application can be made and the statements in the description or drawings are within the scope of the matters stated in the originally filed claims, description or drawings of the original application, but extend beyond the scope of the matters stated in the claims, description, or drawings of the original application immediately prior to being divided, applicants are requested to provide an explanation that the statements in the description or drawings of the divisional application are within the scope of the matters stated in the originally filed claims, description or drawings of the original application.

（d）The case where no changes are made from the description and drawings immediately prior to being divided.

If no changes are made from the description and drawings immediately prior to being divided, applicants are requested to state to that extent.

(2) Explanation that the invention claimed in the divisional application and the invention claimed in another patent application are not identical

Applicants are requested to provide an explanation that the invention claimed in the divisional application and the invention claimed in another patent application do not fall under the identical invention as provided in Article 39(2). It is not necessary to provide an explanation if it is evident at a glance that the invention claimed in the divisional application and the invention claimed in another patent application do not give rise to the reason for refusal under Article 39(2).

(3）Explanation that the reasons for refusal pertaining to another patent application have been resolved (limited to divisional applications filed on or after April 1, 2007, with retroactive effect)

If there is a notice of reasons for refusal for another patent application known to the applicant prior to filing a request for examination of a divisional application, please provide a specific explanation that the reasons for refusal (e.g., lack of novelty/inventive step, non-compliance with enablement requirements, etc.) have been resolved and therefore the application does not fall under the Article 50bis notification.

[Last updated 24 July 2024]

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