Divisional Patent Application in Japan

1) When divisional application can be filed in Japan?

  • Anytime when amendments can be filed
  • Within 4 months after receipt of Decision of Rejection
  • Within 30 days after receipt of Decision of Grant

2) Requirements for divisional application:

  • Claims of divisional applications must not be substantially the same as the claims rejected in parent applications
  • Disclosures of the divisional applications shall be within the scope of the original disclosures of parent applications
  • Disclosures of divisional applications further shall be within the scope of the disclosure of the parent applications immediately before the division

3) First Office Action against a divisional might be deemed to be a Final:

Please be informed that a first Office Action is deemed to be a final Office Action if the reasons of rejection raised in the Office Action(s) issued during the examination of the parent application are not overcome in the divisional application.  That is, if the claims and/or the specification of the divisional application have the reason(s) of rejection that was(were) already raised during the prosecution of the parent application, a first Office Action in the divisional application will be made final.  Hence, if possible, we propose to draft claims in the divisional application in such a manner so to ensure that all the reasons of rejection raised in the parent application are overcome.

4) Benefit of obtaining the earlier filing date:

If the claims of a divisional application are identical to the claims of its parent application, the divisional application is not entitled to retroactively claim the filing date of its parent application as an effective filing date, and accordingly, the divisional application will naturally be rejected over the publication of its parent application as lacking novelty.