Japan IP News

FPB Circular No. 10-01 November 2010

CHANGING DIVISIONAL PRACTICE IN JAPAN

  1. Preface
    In the Japanese Patent Law, a divisional application has been historically regarded as a kind of amendment so that the divisional application had been permitted only at amendment permissible timings before 2007.
    However, the Japanese Patent Law was revised in 2006 and 2008 and those revisions respectively became effective in 2007 and 2009 so as to increase the divisional permissible timings within the patent prosecution. As a result, it became possible to file a divisional application within 3 months (4 months in the case of a patent application from abroad) from the receipt date of a Decision of Rejection issued on or after April 1, 2009 without necessity to file an Appeal. In addition, it is further possible to file a divisional application within 30 days from the receipt date of a Decision for Grant (without appealing against a Decision of Rejection) only when the filing date of the patent application (the international filing date in case of PCT national entry into Japan) is on or after April 1, 2007.
  2. Amendment Permissible Timings On or After April 1, 2009 (Art. 17bis)
    Within a patent prosecution, the followings are amendment permissible timings:
    (1)within a time period until issuance of the 1st Notice of Rejection Reason;
    (2)within a response term of a Notice of Rejection Reason; and
    (3)at the same time as the filing of a Notice of Appeal against a Decision of Rejection (issued on or after April 1, 2009).
  3. Divisional Permissible Timings on or after April 1, 2009 (Art. 17bis & Art. 44)
    In addition to the above timings (1), (2) and (3), the followings are divisional application permissible timings:
    (4)within 3 months (4 months in case of a patent application from abroad) from the receipt date of a Decision of Rejection; and
    (5)within 30 days (but before issuance of a patent) from the receipt date of a Decision for Grant (without Appealing against a Decision of Rejection) only when the filing date of the patent application (the international filing date in case of PCT national entry into Japan) is on or after April 1, 2007.
  4. Notes for Further Prosecution Upon Receipt of Decision of Rejection
    1)　Further Prosecution With Amended Claims:
    When the Applicant receives a Decision of Rejection and he/she wants to further prosecute, he/she is obliged to file an Appeal against the Decision of Rejection. At the filing of the Appeal, he/she must consider whether or not the further prosecution is to be made with any amendment to the pending claims. In many cases, he/she wants the further prosecution with the claims which are somewhat changed from the rejected version of the pending claims. If any amendment to the pending claims is to be filed, he/she must file an amendment at the same time as the filing of a Notice of Appeal. If so, the case is once transferred back to the Examiner having issued the Decision of Rejection for his re-consideration in view of the newly filed amendment to the claims before initiation of the Appeal procedure by the Appeal Examiners. This procedure is called "Pre-trial Examination". In this instance, it is important that the amendment must be filed at the same time as the filing of the Notice of Appeal.

    2)　In Case the Amendment Presents New Issues:
    If an amendment is filed at the same time as the filing of a Notice of Appeal the amendment must be examined by the pre-trial Examiner whether it is restrictively narrowing the pending claim(s) (narrowing in scope the pending claim(s) by restricting either one or more elements contained by the pending claim(s) without adding any additional element to the pending claim(s)) or not. (Such determination seems similar to the New Issue determination in the U.S.). If the amendment cures the rejection reason on which the Decision of Rejection is based the pre-trial Examiner can issue a Decision for Grant. If, however, the pre-trial Examiner should determine that the amendment raises a "New Issue" or cannot cure the rejection reason, the pre-trial Examiner dissolves the pre-trial Examination and returns the file back to the Appeal Board. However, the pre-trial Examiner cannot dismiss the amendment by himself (Art. 164(2)). When the case is returned to the Appeal Board, the Appeal Examiners must determine whether or not the amendment filed at the filing of the Notice of Appeal presents any New Issue and the patentability of the inventions defined by the amended pending claims. If the Appeal Examiners should determine that the amendment raises a New Issue, then they dismiss the particular amendment and determine the patentability of the pending claims without the amendment. At this step, there is no way to further prosecute the patent application with the claims amended according to the Applicant's desire at the filing of the Notice of Appeal. This situation must be undesirable to the Applicant.

    3)　Fail-safe Divisional Application:
    If the Applicant should consider that such amendment at the filing of the Notice of Appeal be possibly dismissed because it raises a New Issue, the Applicant is recommended to file a divisional application for submitting any claim(s) for the further prosecution, as a fail-safe, in order to avoid the above undesirable situation.
    The fail-safe divisional application is effective for the Applicant to further prosecute the case even if the amendment at the filing of the Notice of Appeal should be determined to present a New Issue by the Appeal Board and therefore dismissed. The Applicant may abandon the Appeal or the parent application and can further prosecute only this divisional application.

    4)　Unavoidable Examination Fee for Fail-safe Divisional Application:
    It is, in this instance, to be noted that the official fee for the Request for Examination (called an Examination fee in the followings) in the divisional application at this step must be, in a usual case, paid within 30 days from the filing date of the divisional so that the Applicant cannot usually avoid the payment of the Examination fee even when the Applicant need not further prosecute the divisional application because of allowance of the parent application or other reasons. The Examination fee is about JPY70,000.- plus JPY4,000.- per one claim.
    However, it is possible to get a refund of a half of the Examination fee already paid by abandoning the divisional application as long as no Office Action has been issued in the divisional application (Art. 195(9)).

    5)　Divisional Application without Appeal:
    If the Applicant should want to further prosecute with claims amended and considered to present a gNew Issueh he/she is recommended to file a divisional application with the claims amended as far as no new matter is introduced, without filing the Notice of Appeal, within 3 months (4 months in the case of a patent application from abroad) from the Decision of Rejection. This tactics is advantageous in cost since the Applicant need not pay the Appeal fee of about JPY 10,000.- plus JPY5,500.- per one claim.

    6)　No Stipulation of Expedited Examination for Divisional:
    The Japanese Patent Law does not stipulate that the divisional application must be examined earlier than a usual patent application, so that the Applicant must usually wait for several years for knowing the Examination result for the divisional application even when the divisional has been filed immediately after the Decision of Rejection in the parent patent application.
  5. Divisional Application Upon Receipt of Decision for Grant:
    It is important that when a Decision for Grant is issued in a patent application, a divisional application is permitted within 30 days (extensible by 30 days) from the receipt of the Decision for Grant, if the filing date (the international filing date in case of PCT national entry into Japan) of the parent application is on or after April 1, 2007. It is to be noted that the Decision for Grant must be issued without Appealing against a Decision of Rejection (Art. 44(1)(ii)).
    Therefore, it is conceivable to file a divisional application with claims which are somewhat broader than or shifted in essence from the granted claims, if the Applicant should want another protection scope different from the granted claims. In other words, the Applicant can select a tactics to obtain a patent for narrower claims in a parent application and then to file a divisional with either claims somewhat broader than or shifted in essence from the granted claims, or claims defining a subject matter disclosed but not claimed yet.
    In this instance, it is to be noted that the registration fee (1st to 3rd annuities) must not be paid immediately upon receipt of the Decision for Grant since the divisional is not permitted after actual issuance of a patent resulted from the registration fee payment. In other words, it is recommendable to make sure of necessity of a divisional before actual issuance of a Decision for Grant in view of such short time period as 30 days for divisional from the receipt of the Decision for Grant, even though the 30 days period is extendable by 30 days by extending the registration fee payment due (Arts. 44(6) & 108(3)) .
  6. Measures For Suppressing Misuse of Divisional Application Procedure:
    (1)When the Examiner should find the same rejection reason in the divisional application as that in the parent application (filed on or after April 1, 2007), the Examiner must issue a Notice of Rejection Reason notifying the Applicant of that fact (Art. 50bis). In that case, an amendment replying to the particular Notice of Rejection Reason must clear the same requirement as the final Notice of Rejection Reason (Art. 17(5)). If not, the amendment must be dismissed (Art. 53).
    (2)The JPO announced on March 23, 2007 that the Applicant is required to submit a statement at the filing of a divisional application on or after April 1, 2007 which explains that the divisional application complies with the divisional application requirements.

    End