Current Practice:

As a typical example, under the current Japanese patent practice, in the case that a Decision of Rejection is issued against a patent application, it is possible to file an Appeal regarding the (parent) application and/or to file a new divisional application.

For overseas clients, it is necessary to file a Notice of Appeal within 4 months (non-extendable) after the receipt of the Decision of Rejection. If you wish to amend claims, an Amendment can be filed only at the time of the filing of the Notice of Appeal. An Appeal Brief can be filed later.

Regardless of whether an Appeal is filed or not, it is possible to file a new divisional application within the above non-extendable 4 months.

The problem with the current practice is that a Request for Examination directed to the new divisional application must be filed (i) within 3 years from the international filing date of the parent application (in the case of a national phase entry of a PCT application) or (ii) within 30 days from the filing date of the divisional application, whichever is later.

As you will understand, when we receive a Decision of Rejection, it usually took already three years or more from the international filing date. Hence, in practice, it is usually required to file a Request for Examination directed to the new divisional application (ii) within 30 days.

Previously, even if a divisional application is filed as a precaution, examination for the divisional application had been initiated immediately, and therefore, there were times when an Office Action was issued against the divisional even before we could confirm the result of the Appeal procedure regarding the parent application.

New Practice:

However, under the revised practice, which will be applied to divisional applications satisfying the following requirements, applicants may file a request for suspension of examination of the divisional application:

1. Divisional application is filed after a Decision of Rejection is issued against a parent application;
2. Appeal is issued for the parent application and the parent application is being re-examined by the original Examiner or in the Appeal procedure by the Board of Appeals;
3. Request for Examination directed to the divisional application is filed on or after April 1, 2023; and
4. Examination of the divisional application has not yet commenced.

Required Procedures:

In order to file a request for suspension of the examination, it is necessary to file documents within 5 days from the filing date of the Request for Examination directed to the divisional application.

Procedural Flow:

If the divisional application is eligible for the suspension, examination of the divisional application will be suspended for three months after any one of the following events:

• a Decision to Grant is issued for the parent application after re-examination by the original Examiner;
• an Appeal Decision is issued for the parent application;
• the Appeal for the parent application is withdrawn or dismissed.

We will explain more details for our clients’ individual cases if we believe such a suspension will be effective. 

Resumption of Suspended Examination [Update on April 1, 2024]:

The Japan Patent Office announced that the procedure will be changed so that the applicant may file a request for resumption of the suspended examination of the divisional application during the suspension period.  This means that the examination of the divisional application may be resumed even before the end of the suspension period. 

Please note that the applicant should file a request together with a written statement during the suspension period. 

Should you have any further questions, please do not hesitate to contact us.