Worried what to do about a divisional patent application while the parent application appeal is pending in Japan? How to handle the fork in the road?
Starting from April 1, 2023, for divisional applications filed in conjunction with a Request for Appeal against the Decision of Rejection, it is now possible for the applicant to ask to temporarily suspend examination, until the results of preliminary appeal examination or appeal examination of the original application are known. This will allow applicants to decide strategy for the divisional application more effectively.
So, what should you know?
Prerequisite Status of the Applications
(1) The divisional application: filed after a Decision of Rejection in the parent application, and its Request for Examination is filed on or after April 1, 2023. (Here, a divisional application filed after a Decision of Rejection includes both a divisional application that was submitted with an appeal, and a divisional application filed when an Office Action was newly issued to the original application in the appeal stage.
(2) The parent application: pending either Preliminary Appeal examination or an Appeal against the Decision of Rejection.
Required Petition Procedure
The following documents must be submitted within 5 business days from the filing date of the Request for Examination for the divisional application in question:
(1) A Petition stating reason for, and requesting, Suspension of examination of the divisional application until the results of the preliminary appeal examination or appeal examination of the original application are known.
(2) A form filled out stating reason for, and requesting, Suspension of examination of the divisional application.
After Petition
After the above Petition and form are submitted, the JPO will send notification of the decision whether the divisional application shall be subject to Suspension of examination. If it is suspended, the JPO will notify when examination will be resumed (within 3 months of definite developments on the parent application).
Please inquire, do not miss out on the opportunity to wait and see.
* The information provided on this website is for informational purposes only and is not intended as legal advice.
** For questions or consultation, please contact Taro Yaguchi or our firm (usmail@keisenassociates.com) for more information.
Sources
Japan Patent Office. “原出願が審判係属中の分割出願に対する審査中止の運用について [Suspension of Examination for Divisional Applications, where Parent Application is Pending Appeal].” February 2023; updated March 31, 2023. Accessed April 21, 2023.
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