March 28, 2023

The Japanese Patent Office (JPO) will initiate a new examination practice for a divisional application filed concurrently while appealing a Decision of Rejection for the parent patent application.

During an appeal, the applicant often wishes to file a new set of claims in a divisional application having broader or different claim coverage than the claims of the parent application. The JPO currently conducts the appeal examination of the parent application and the examination of the divisional application in parallel. Under the current examination procedure, an Office Action for the divisional application is likely to be issued before the appeal examination is completed. This often causes confusion for the applicant.

Under the new practice, the applicant may temporarily suspend the examination of the divisional application until the appeal outcome is reached. The requirements are as follows:

(1) A divisional application must be filed after a Decision of Rejection for the parent application has been issued;

(2) An Appeal has been filed in response to the Decision of Rejection of the parent application and the parent application is pending; and

(3) It is advantageous for the applicant and/or the JPO to wait for the outcome of the appeal examination.

The new practice will be applied to divisional applications, for which a Request for Examination is 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 a Request for Examination is filed on or after April 1, 2023).

Note that a divisional application with a so-called omnibus claim does not meet the above-requirement (3). The examination of a divisional application with an omnibus claim cannot be suspended. The omnibus claim is an informal type of claim directed to a device or method illustrated in the specification and/or the drawings.

Furthermore, to participate in the new practice, a petition must be filed within five (5) business days of the filing of a Request for Examination for the divisional application.

When the appeal examination is completed, the examination of the divisional application will begin.