Applicants can now request a resumption of examination of a divisional application that has been suspended during the appeal examination of the parent application.

In accordance with the rules introduced last year, applicants may request the temporary suspension of the examination of a divisional application until the result of an appeal for the parent application.

This has made it more efficient for examiners to examine divisional applications with reference to the appeal results and enabled applicants to refine their divisional claim strategies based on the outcome of the appeal.

Refer to our previous article on this for more details HERE.

Previously, requesting resumption of examination was not possible

Previously, an examination was suspended for up to three months after any of the following outcomes in the parent appeal, and applicants could not request resumption of the suspended examination or retract the request.

(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(3) The request for appeal is withdrawn or dismissed.

Revised rules

Under the revised rules that came into effect on April 1, 2024, applicants or their representatives in Japan can request a resumption of the suspended examination for the divisional application, provided this is before any of the outcomes (1) to (3) 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.

Advantages of provision to request resumption of examination

The amendment to the temporary suspension of examination rule allows applicants who have decided upon a specific scope of claims for the divisional to have their claims examined in a timely manner and before the outcomes in the appeal stage for the parent.