On February 13, 2023, the Japan Patent Office (JPO) announced that the JPO will introduce a measure that allows applicants of patent applications to request suspension of examination of divisional applications filed from applications that are pending trial (appeal) proceedings.
 
Under the Patent Law of Japan, divisional applications can only be filed during the periods for responding to Office Actions, the period for filing a Request for Trial (Notice of Appeal), and the period after the issuance of a Decision to Grant a Patent and before paying the issue fee (except for a case in which the Decision to Grant a Patent is issued subsequently to the filing of a Request for Trial in the same application). As a result, once a Request for Trial is filed, there may be no opportunity to file a divisional application, and therefore, applicants who wish to continue prosecution via a Trial and wish at the same time to maintain the pendency of the patent application usually need to file a divisional application at the same time as the Notice of Appeal.
 
However, under the current practice, the examination of divisional applications is conducted according to the customary schedule, regardless of whether or not the parent application is pending Trial, which often results in unnecessary Office Actions being issued against provisional claim sets that were filed before obtaining the results of the Trial in the parent application.
 
In order to address this inconvenience to both applicants and JPO examiners, the JPO has decided to implement a measure so as to allow applicants, who have filed both a Request for Trial and a divisional application in response to a Decision of Refusal, to request suspension of examination of the divisional application until the result of the Trial made known.
 
The necessary procedures for requesting suspension of examination in such a case are as follows.
 
(1) Filing a Written Statement within five (5) working days explaining the reasons for the request for suspension of examination
(2) Sending the requisite form within five (5) working days stating that said reasons have been explained
 
Once the request for suspension of examination is accepted by the JPO, the examination will be suspended until three months after any of the following events.
 
(1) Issuance of Decision to Grant a Patent as a result of re-examination by the examiner (when an Amendment is filed together with a Notice of Appeal)
(2) Issuance of a first trial decision
(3) Withdrawal or dismissal of the Request for Trial
 
This measure will apply to divisional applications for which a Request for Examination is filed on or later than April 1, 2023.

 
Summary prepared by the International Information Group
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