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Patent System Q&A
Opening up a world of opportunity
5. DIVISIONAL APPLICATIONS
- When divisional claims are the same as granted parent claims - see 5.9 Double Patenting
- When divisional claims are the same as rejected parent claims - see 5.10 Notification under Article 50bis.
- Under the Japanese Utility Model Law, only "devices relating to the shape or construction of articles or a combination of articles" are registrable ("methods" or "software" are not acceptable).
- (PCT national entry applications) According to Japanese practice, an applicant is required to submit the original claims (and their JP translations) for national entry. Thereafter, an applicant will file the amended claims as a Voluntary Amendment within one month from the filing date under the Utility Modal Law.
- We are required to pay annuities (at least 3 years*) at filing a Utility Model application (*this fee depends on the number of claims).
- The submission of drawings is mandatory for filing a Utility Model application.
- Utility Model applications are not subject to examination except for formality requirements.
- It usually takes about 6 months to receive a certificate of registration.
- The duration of the registration is 10 years from the International Filing date.
When can divisional applications be filed?
There are ample opportunities to file divisional applications in Japan.
Generally, for parent applications filed after April 1, 2007, divisional applications can be made:
1. At any time before a “Notice of Rejection” office action.
2. Within the 3-month time period for responding to a “Notice of Rejection” office action (extendable by 3 months for overseas applicants)*.
3. Within 4 months (overseas applicants) after a Decision of Rejection (with or without requesting an Appeal).
4. Within 30 days after an application is granted, but prior to registration (provided the application was not granted via an appeal).
* During an Appeal trial, divisionals can only be filed if the examiners issue a Notice of Rejection, in which case 2. above applies. Note, there is no guarantee Appeal examiners will issue a Notice of Rejection during an Appeal.
** The above timeframes differ slightly for original parent applications filed before April 1, 2007. KIPB Japan can advise you on this if it applies to your application.
What are the fees for filing a divisional application?
Official fee:
●JPY14,000 (for Japanese language applications)
OR
●JPY22,000 (For filing as a "Foreign Language Application" (i))
KIPB basic attorney fee:
●Please contact us directly for our industry-competitive attorney fees (we aim to respond within one working day.)
Notes:
(i) KIPB Japan's general policy for filing Divisional is to initially file them as "Foreign Language Applications". Whilst this is slightly more expensive than filing them in Japanese based on the content in the Japanese language parent, the benefits to clients outweigh this (see 5.6 Advantages of Filing as Foreign Language Application.)
(ii) Similar to the US unity of invention requirement, if an application is ruled to be two distinct inventions, the inventions therein can be divided into divisional (i.e., new application) and continued parent.
(iii) There is no Information Disclosure Statement rule as in the US: (obliging the US applicant to disclose all information known to the applicant that is material to patentability (e.g., relevant art, references) until issuance of patent certificate (37 CFR 1.56)). The Japanese applicant is obliged to disclose known references at the time of the original application only, any references discovered by the applicant subsequently can be ignored.
Do I need to file a request for examination for a divisional (despite already filing one for the original application)?
Yes, a separate request for examination is necessary.
The deadline for filing the request is 3 years from the date of filing the original application, or, if that that term has expired, within 30 days of filing the divisional. Examination request fees depend on the number of claims. An applicant has the option of reducing the number of claims by filing a Voluntary Amendment at the time of the request (see 3.5 Examination Request Fees.)
What are the requirements for divisional claims?
You are generally free to file any claims (including an entirely new set of claims) in a divisional application as long as they are fully supported in the original disclosure in the parent application - otherwise a new matter rejection will arise.
It is possible to file amendments at any time before the issue of an office action against the divisional. However, KIPB Japan generally recommends filing amendments by the time of the request for examination, since (i) we cannot predict when an office action will be issued and (ii) the examination fee depends on the number of claims, which cannot be recouped by reducing claims later. (See 5.2 Request for Examination for the deadlines for requesting examination for divisionals.)
Note also that the examined claims in a divisional should not be the same or very similar to the current claims in the parent application:
Do I need to provide arguments with the divisional directed to the current rejections?
It is recommended (but not a requirement) to submit a Statement explaining that the claims in the divisional are free from the reason(s) for rejection as found in the original application. This Statement can also explain how each claim has sufficient support in the specification.
You should also note that if the examiner determines the same reason(s) for rejection exist for the divisional that were already notified for the original application, a first Office Action will be made final, and thus the subsequent scope for amendments becomes much more limited.
I'd like to file multiple divisionals. Is that possible?
Yes, you may freely file as many divisionals based on the original application as you wish.
Note: Similar to the US unity of invention requirement, if an application is ruled to be two distinct inventions, the inventions therein can be divided into divisional (i.e., new application) and continued parent.
Information Disclosure
Note also that there is no specific Information Disclosure Statement rule as in the US: (obliging the US applicant to disclose all information known to the applicant that is material to patentability (e.g., relevant art, references) until issuance of patent certificate (37 CFR 1.56)). The Japanese applicant is obliged to disclose known references at the time of the original application only, any references discovered by the applicant subsequently can be ignored (For more on Japanese disclosure requirements see 2.11 Prior Art Disclosure.)
Why does KIPB recommend filing divisional applications as "foreign language applications"?
KIPB Japan's policy is to initially file Divisional applications as "Foreign Language Applications" - equivalent to the content in the original foreign language PCT/Paris application and claims at the time of filing in Japan. This gives us the broadest basis for subsequent amendments based on the content in the original application.
KIPB Japan Procedure and Explanation
After filing the divisional as a “Foreign Language Application” with the original specification, claims, etc. of the parent, KIPB Japan will translate and file this as per the JPO’s requirements on translations. All divisional translations should be submitted within 2 months from the filing date of the divisional.
The Japanese translation can subsequently be “corrected” if necessary, on the basis of the specs/claims/drawings in the other language filed as a “Foreign Language Application”. This is not possible if the divisional is filed in Japanese from the start. This strategy could help in clarity or support disputes, for example, and in effect provides some leeway in re-writing parts of the Japanese text based on explanations of the meaning in the original foreign language text.
KIPB Japan will file an amendment, replacing the original claims with divisional claims with the request for examination, which must be submitted within 30 days of filing the divisional. However, if an applicant cannot provide a divisional claim set by the time of the Request for Examination; we will delete all original claims apart from Claim 1 (leaving this as a "placeholder/omnibus claim") - since Request for Examination fees depend on the number of claims and cannot be recouped later even claims are reduced. A replacement set of claims can then be filed at any time before the first office action.
Is it possible to file a divisional application as a utility model application from a patent application?
Yes. You can convert applications (including original PCT and divisional applications, etc.) between patents, utility models and designs (Art. 46 of the Patent Law.) This differs from the conversion system is the U.S. between provisional applications and non-provisional applications (MPEP 601.01(c)).
A patent application (including divisional applications) may be converted into a utility model application within 3 months (four months for overseas residents) of an examiner's initial Decision of Rejection or within 9 years and 6 months of the filing date, whichever expires earlier.
The original patent application will be deemed to have been withdrawn. The new utility model will be deemed as being filed on the filing date of the original patent application.
Utility Model Overview
If you wish to convert a patent application to a utility model, the following information on utility models will be useful:
Is there a continuation-in-part system in Japan, like in the US?
Unfortunately, there is no continuation or continuation-in-part system in Japan. Instead, we can file divisional applications based on a parent application. Multiple divisional applications can be filed from a parent, and each divisional can be further divided (provided they all meet the substantive requirements for division.)
Divisional applications in Japan are not usually filed with potential litigation or licensing in mind. Instead, they allow applicants to pursue other inventions that can be extracted from the original disclosure, to maintain claims after a unity of invention rejection, or to keep broader claims alive after a final office action/refusal that restricts the amendment scope in the parent, etc.
With a few exceptions, applicants are generally free to file any claims in a divisional application provided they are fully supported in/within the scope of the original disclosure. New matter is strictly prohibited, and claims rejected in the parent will usually be refused without chance of further unrestricted amendments.
Divisional applications can be filed at various times during the prosecution, including with an Appeal against a final decision or after grant (provided grant is not via an Appeal.
For more on the requirements for divisional applications, see Section 5. Divisional Applications.
Are there other issues such as double patenting that we should consider?
The JPO will not grant a second patent (divisional) if the claims contain substantially identical subject matter as the granted parent claims. This includes when differences are deemed to only amount to the addition, deletion, or replacement of well-known art, or a simple change in the claim category recited (method vs. product).
Can I keep rejected claims from the parent application?
Generally, no.
If the examiner finds the same reason for rejection as in the parent application (e.g. lack of inventive step in claims due to the same cited references), he/she will issue the equivalent of a FINAL office action under Article 50bis of the Japanese Patent Act.
This imposes the same restrictions on subsequent amendments as under a FINAL office action (i.e. 1) claim cancellation, 2) restriction of elements already recited in claims, 3) error correction of errors, or 4) the clarification of an ambiguous description flagged by the examiner.)
See also 4.4 Final and Non-final Office Actions.
If the subsequent claim amendment fails to meet the Article 50bis requirements, the examiner will likely issue a Dismissal of the Amendment with the pending claims reverting back to the previously filed claims. Since these were already rejected in the parent, a Decision of Rejection (necessitating an Appeal) is also likely with the Dismissal.
Thus, to avoid an office action under Article 50bis, the examined divisional claims should differ sufficiently from already rejected claims in the parent (or in other divisionals with the same parent). We also strongly advise submitting a written opinion explaining why these claims overcome the reason for rejection in the parent application.
If you wish to risk filing claims that are the same/very similar to the parent claims, you will need to provide a very convincing argument as to why the claims are patentable despite the Examiner’s rejection.
Should I file a divisional application as a precaution when filing an appeal for an original application?
Yes, we strongly recommend filing a precautionary divisional application(s) in conjunction with an Appeal against a Decision of Rejection for the corresponding parent application to maintain the prosecution of your invention regardless of the result of the appeal, especially if you are unsure whether an appeal will succeed or restrict the scope of your invention.
Temporary suspension of the examination of a divsional application whilst the parent is pending at appeal.
According to rules introduced on April 1, 2023, applicants can also request the temporary suspension of the examination of the divisional application until the result of the appeal for the parent.
This not only makes it more convenient for examiners to examine divisional applications with reference to the appeal results, it also provides applicants with opportunities to develop more efficient and effective claim strategies for the divisional application based on the official outcome of the appeal.
Further, since divisional applications cannot be filed after a grant via an appeal, utilizing the suspension of examination also allows applicants to pursue other inventions based on the original disclosure even after an appeal decision or allowance.
What divisional applications are eligible for the suspension procedure?
Applications for which examination requests are filed on or after April 1, 2023, and which meet the following requirements:
(1) The divisional application was filed after a Decision of Rejection (office action) was issued against the parent.
(2) A request for an appeal against the Decision of Rejection has been filed for the parent, and the parent is under pre-appeal re-examination or appeal.
(3) It is advantageous to wait for the result of the pre-appeal re-examination or appeal of the parent.
* Since divsionals can be filed if office actions are issued during the pre-appeal re-examination or appeal stage, these are also eligible for the new practice.
Request procedure
To request suspension of examination of the divisional, an applicant should submit (1) and (2) below to the JPO within five working days from the date the request for examination was filed.
(1) A petition for suspension of examination of the division application (under article 54(1) of the Japanese person act)
(2) A dedicated online form explaining the eligibility of the request.
After filing the request
The JPO will determine whether the divisional application is eligible for the new procedure and notify the applicant. This correspondence will be available to the public.
If eligible, the examination will be suspended for up to three months after any one of the following Appeal stage outcomes of the parent:
(1) A copy of the Decision of allowance during the pre-appeal re-examination stage of the parent is sent to the applicant.
(2) A copy of the first* appeal Decision (grant or rejection) is sent to the applicant.
(3) The request for appeal is withdrawn or dismissed.
After the suspension period ends, examination of the divisional application will commence and proceed as per standard examination procedures for divisionals.
*This does not include a second appeal decision issued due to a lawsuit for revoking the first appeal decision.
** It is not possible to retract the request for suspension of examination.
Outline of examination suspension procedure:
Applicants can also request a resumption of the examination divisional that has been suspended
This should be requested before any of the outcomes (1) to (3) above for the parent. If so, the examination will commence in the same time frame as per regular divisional applications. If not, the ‘up to 3 months after (1) to (3)’ rule above continues to apply.
The applicant will need to submit a request for resumption of examination as well as an online application form. KIPB can advise you on this and carry out the procedure for you.
Note that once a request for resumption of examination is accepted, the applicant cannot file another request to suspend the examination.
Why resume examination?
Applicants who have decided upon a specific scope of claims for the divisional after requesting suspension can have their claims examined in a timely manner and before the outcomes in the appeal stage for the parent.
