News

Effective April 1, 2023, a request for stay of the examination of divisional applications will be accepted by the Japan Patent Office (JPO).

Under the law, a chance to file a divisional application during the Appeal examination is not guaranteed. It is only possible when a new Office Action is issued. A divisional application cannot be filed at the Grant or Final Rejection by the Appeal Board. Accordingly, a divisional application is often filed with the appeal. The divisional application has various roles. Typical roles are strategic roles and fallback position roles.

Therefore, there are some divisional applications for which a later examination is preferable. The JPO has introduced a new rule that allows Stay of Examination of Divisional Application until the outcome from the Board of Appeal Examination.

Details are as follows.

1. Eligible divisional applications
   A divisional application divided from a parent application which received a Final Rejection and is pending in an Appeal procedure.
2. Non-eligible divisional applications
   (1) A grandchild or further divisional application
   (2) Divisional applications that have no definite claims, for example, a divisional application with an Omnibus Claim.
3. Procedure for Request of Stay
   (1) Applicant must file a Request for the Stay of Examination within 5 days from the date on which the Request for Examination is filed. Since three years will have passed from the PCT filing day at this timing, in practice we will file the Request for Examination and this Request for Stay within 30 days from the divisional application.
   (2) The JPO examines the Request for Stay and informs the application whether the request is accepted or not.
   (3) No official fee is required for the Request for Stay.
4. Stay Period
   If a stay is granted, the divisional application will not be examined and also will not be placed in the examination queue while the appeal is pending in the appeal procedures. Once the stay is requested, the request cannot be cancelled.
5. Effect of Stay
   (1) The divisional application is not in the queue while its parent application is pending in the appeal procedures.
   (2) After disposal by the Board of Appeal, the divisional application is placed in the queue for substantive examination. The time until a stayed case will be examined is the sum of the time until the Appeal process ends and the waiting time for the examination of the divisional application.  Accordingly, the total duration would be 1.5 to 2 years.
   (3) Request for a refund of 50% of the examination fee is possible if the precautional divisional application is withdrawn upon a favorable outcome in the appeal of the parent case.

The new rule will become effective April 1, 2023. Please let us know should you have any questions.