JPO allows divisional applications suspended while the original application appealed

JPO allows divisional applications suspended while the original application appealed

JPO allows divisional applications suspended while the original application appealed

The Japanese Patent Office (JPO) will begin a new examination procedure for a divisional application filed concurrently with an appeal of a Decision of Rejection for a parent patent application.

During an appeal, the applicant usually desires to file an entirely new set of claims in a divisional application with broader or different claim scope than the parent application’s claims. The JPO is now conducting the appeal examination of the parent case and the divisional application concurrently. Under the existing examination system, an Office Action for the divisional application is likely to be issued prior to the completion of the appeal examination. This frequently confuses the applicant.

According to the new procedure, the applicant may suspend the consideration of the divisional application until the conclusion of the appeal is determined. The requirements are as follows:

  • A divisional application must be filed after a Decision of Rejection for the parent application has been issued;
  • An Appeal has been filed in response to the Decision of Rejection of the parent application and the parent application is pending; and
  • It is advantageous for the applicant and/or the JPO to wait for the outcome of the appeal examination.

The new practice will apply to divisional applications with a Request for Examination filed on or after April 1, 2023 (the filing date of the Appeal and the divisional application may be on or before March 31, 2023, as long as the Request for Examination is filed on or after April 1, 2023).

It should be noted that a divisional application containing an omnibus claim does not satisfy condition (3). The investigation of a divisional application including an omnibus claim may not be suspended. The omnibus claim is a sort of informal claim directed to a device or technique depicted in the specification and/or drawings.

Furthermore, in order to engage in the new practice, a petition must be submitted within 5 (five) working days following the filing of the divisional application’s Request for Examination.

When the appeal examination is concluded, the divisional application examination will commence.

*** Other Articles***

– You could visit here to see Procedure of Trademark in Japan.

– You could visit here to check the Required documents of filing trademark in Japan.

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