Japan IP News

FPB Circular No. 08-01 January 2008

FAIL-SAFE & CONTINUATION TYPE DIVISIONALS IN JAPAN

  1. Background
    In the Japanese patent system, the Applicant is given some time slots permitting therewithin the filing of a divisional application during the patent prosecution. The Applicant is prohibited to file the divisional application at the outside of the particular time slots. These time slots are referred to as division permissible time slots in the following.

    When the Applicant receives a Decision of Rejection as a final rejection as a result of Examination and an Appeal has been filed against the Decision of Rejection, a division permissible time slot is given which is a period of 30 days from an Appeal date. Namely, no voluntary divisional application can be filed after a lapse of 30 days from the Appeal date. Furthermore, an amendment is permitted to only restrict the scope of the rejected claims in a parent application within the same time slot, i.e. 30 days from the Appeal date.

    Therefore, there is no way to re-start the Examination in the parent application with claims either shrunk, broadened or shifted in scope from the rejected claims when the Appeal Board decides to maintain the Decision of Rejection.
  2. Fail-Safe Divisional Application
    It is therefore strongly recommended to file a divisional application, as a fail-safe, within the 30-day period from the Appeal date for keeping a right to further prosecute even after the issuance of an Appeal Decision. In the divisional application, the Applicant can enjoy freedom to formulate the claims so as to claim any subject matter as long as the matter has been disclosed in the original disclosure. Even when the Appeal Decision is issued from the Board of Appeal to maintain the Decision of Rejection, the Applicant can further prosecute the divisional application to receive further Examination on the claims which define inventions in different ways from the parent application, so that the particular divisional might be called a "Fail-safe Divisional Application". In particular, the fail-safe divisional application may be utilized as a kind of Auxiliary Request in the EPO practice for presenting a new set of claims defining a subject matter differently from those claims submitted to the Board of Appeal and therefore the particular fail-safe divisional application may be called "Auxiliary -request type Divisional Application".
  3. Request for Examination
    It is to be noticed that a request for Examination is still needed for maintaining the divisional application. That is, the request for Examination must be filed within 30 days from the filing date of the divisional when the divisional application is filed later than three years from the filing date of the parent application.
  4. New Continuation Type Divisional Without Appeal
    The Japanese Patent Law was changed in its Art. 44, thereby to provide a new time slot permitting a divisional application, which slot is a period of 30 days from a Decision either of rejection or for grant without necessity of filing any Appeal.

    Such divisional application is to get a further cycle of Examination without appealing against the decision resulted from the first cycle of Examination on the parent application and therefore might be called "Continuation Type Divisional Application".

    This new stipulation became effective on April 1, 2007 and is applicable to a patent application filed on or after April 1, 2007.
  5. Conclusion
    In the case of a patent application filed before April 1, 2007 and issuance of a decision of rejection, the Applicant must consider filing a fail-safe divisional application within 30 days from the Appeal date since no divisional can be filed voluntarily within the Appeal procedure after the lapse of the 30-day period without receiving a notice of reason for rejection which may be issued at the Appeal Examinerfs discretion.

    In the case of a patent application filed on or after April 1, 2007, the Applicant must consider filing either fail-safe or continuation-type divisional applications without respect to a Decision either of Rejection or for Grant when the Applicant wants to further prosecute with claims different from the rejected or granted claim(s). In summary, the Applicant is allowed to file a continuation type divisional within 30 days from the issuance date of the decision either of rejection or for grant, or to file a fail-safe divisional within 30 days from the Appeal date.

    Even though the division permissible time slots have been increased in number for a patent application filed on or after April 1, 2007, it is still impossible to file a divisional application at the outside of the division permissible time slots so that the Applicant must be careful in filing the continuation-type divisional application upon issuance of a decision either of rejection or for grant as well as the fail-safe divisional application at the filing of an Appeal against the final rejection.